NIKE’s “JUST DO IT” beat “JUST TRI IT” in Taiwan’s IP Office

TAIWAN TRIATHLON CO., LTD. (“TTC”), a Taiwan-based company providing service for arranging and organizing sports and training events, filed trademark application for “JUST TRI IT” on March 20, 2019, designated for use in services including organizing triathlon and sports event; providing fitness training and coaching; and providing information of recreational activity and training exercise. TTC’s application was granted on April 16, 2020 (Reg. No. 02054520, see below). NIKE INNOVATE C.V. (“NIKE”) filed opposition on June 11, 2020.

According to NIKE, TTC’s opposed trademark is similar with NIKE’s “JUST DO IT” trademark (Reg. No. 01732276, see below), and may cause confusion on the relevant consumers.

Taiwan’s IP Office (“TIPO”) sided with NIKE on July 29, 2020, ruling that TTC’s opposed trademark should be cancelled based on the following reasons:

 

1.    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

2.    On similarity, TIPO found TTC’s “JUST TRI IT” similar with NIKE’s “JUST DO IT”. Although TTC’s opposed trademark is composed of the phrase “JUST TRI IT” and three icons of athlete, the main portion of TTC’s trademark is still “JUST TRI IT”. From the viewpoint of ordinary consumers, the only difference between the two trademarks is their second word. Thus, the overall appearance and pronunciation of the two trademarks are similar.

3.    Additionally, TIPO noted that NIKE’s cited trademark is also applied for use in entertainment services, arranging, organizing and holding a series of sports activities and competitions; and providing sports courses and holding sports lectures for training sports professionals. These services are highly similar with those designated by TTC’s “JUST TRI IT”, because they are all related to arrangement of sports contests, and providing recreational and educational service.

4.    Besides, NIKE’s “JUST DO IT” is highly distinctive. In Taiwan, TIPO found NIKE is the only registrant that acquires registration for “JUST DO IT”. Such mark, after NIKE’s continuous and profound use, has become a well-known trademark, and is more recognizable among the relevant consumers. As such, it is obvious that the relevant consumers are more familiar with NIKE’s “JUST DO IT”.

 

Given TTC’s “JUST TRI IT” is similar with NIKE’s “JUST DO IT”, applied for use in similar service, and NIKE’s “JUST DO IT” is distinctive and possesses higher fame in service regarding organizing and arranging sports event, TIPO ruled TTC’s “JUST TRI IT” may cause confusion among the relevant public and thus should be cancelled based on Article 30.1.10 of Trademark Act.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4T2xVYlovendEdlJhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled logo that is similar with Jaguar’s Trademark

When seeing the below trademark (Reg. No. 02022659), could you recognize the letters presented? (Hint: they are English alphabets.)

If you think they are “X” and “F”, then you are right!

But that’s also why on February 12, 2020, JAGUAR LAND ROVER LIMITED (“JAGUAR”), the multinational British automotive company, filed opposition against this logo before Taiwan’s IP Office (“TIPO”), alleging likelihood of confusion with JAGUAR’s registered “XF” trademark (Reg. No. 01258404, see below)

TIPO sided with JAGUAR on August 11, 2020, ruling that the opposed trademark violates Article 30.1.10 of Trademark Act, which provides that “A trademark shall not be registered if it is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers”.

On similarity, TIPO noted that the opposed trademark is composed of English alphabet “F” and three stylized dots. The three dots are arranged and positioned in the upper-left, the middle, and the bottom-left in relation to the alphabet “F”, and they are connected with “F” in a way that would also generate the visual impression of “XF”. Thus, TIPO posited that there is medium degree of similarity between the two trademarks.

As to the designated goods, the opposed trademark is designated for use in automobile and its parts, such as rearview mirror, sideview mirror, windshield, steering wheel, and rim, while JAGUAR’s “XF” trademark is applied for use in automobile, sports car, and RV. Therefore, TIPO posited that the two trademarks are designated for use in similar goods.

Meanwhile, TIPO noted that JAGUAR’s “XF” trademark has been put in use since 2008, and the car that features the “XF” trademark was introduced to Taiwan in 2014. Moreover, “XF” is highly distinctive because it is not related to the nature and function of the goods it is applied for use. On the other hand, TIPO noted that there is little evidence submitted to prove the use and consumer’s recognition of the opposed trademark. Hence, TIPO opined that the relevant consumers are more familiar with JAGUAR’s “XF”, which shall be awarded with greater weight when considering likelihood of confusion.    

In conclusion, since the opposed trademark is similar with JAGUAR’s “XF” trademark, is applied for use in similar goods, and JAGUAR’s “XF” is distinctive and is more recognizable, TIPO ruled that the opposed trademark should be cancelled due to likelihood of confusion caused by its similarity with JAGUAR’s “XF”.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K3Z3NmRXQmhHdGh1VmZrR3hjRHlxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Godzilla Gear”, A Trademark Applied For Use In Export And Import Service, Was Cancelled Due To Likelihood of Causing Confusion With Toho’s Famous “GODZILLA” Trademark

 Toho Co. Ltd. (“Toho”), the Japanese company that creates the iconic monster movie series “Godzilla”, filed trademark opposition in Taiwan’s IP Office. (“TIPO”) against “Godzilla Gear” on April 14, 2020, citing violation of Article 30.1.11 of Trademark Law.

The opposed trademark, “Godzilla Gear”, was filed on June 3, 2019, originally applied for use in retail and wholesale, department store, online shopping, and convenience store services, and products such as suitcase, backpack, purse, sportswear, swimsuit, apparel, toy bag, pajamas, cap, necktie, etc. To overcome the similarity posed by Toho’s registered “GODZILLA” trademarks, the applicant reduced the scope of designated services, and TIPO in the end granted the application on January 16, 2020. The opposed trademark, after modification of its designated use, only covered services including import and export, auction, online action, and providing market information (Reg. No. 02036332, see below). 

However, Toho still filed opposition against “Godzilla gear”, contending that registration of such trademark would cause confusion with its famous “GODZILLA” (Reg. No. 00667250, see below).

Trademark holder of “Godzilla Gear” argued that the services in which the opposed trademark is applied for use are very different from Toho’s “GODZILLA” trademark, which is applied for use in products and service such as caps, scarf, backpack, computer, toy, jewelry, and entertainment. Thus, “Godzilla Gear” will not cause confusion with Toho’s registered “GODZILLA” trademark.

TIPO, based on the following reasons, sided with Toho:

1.    TIPO found that Toho’s registered “GODZILLA” has become a famous trademark at the time when the opposed trademark was filed. Toho submitted sufficient evidence in this regard, such as records showing that the monster movie series “GODZILLA” was first introduced in as early as 1954, and that the iconic monster “GODZILLA” has been the leading character in multiple popular movies, including “Godzilla against Mecha Godzilla” (2002), “Godzilla: Tokyo SOS” (2003), “Godzilla: Final Wars” (2004), “Godzilla” (2014), and “Godzilla II: King of the Monsters” (2019). In particular, the reboot “Godzilla” movie in 2014 was ranked among Taiwan’s top 10 movies of 2014, and its sequel “Godzilla II: King of the Monsters” was also a box office hit, accumulating NT$ 200 million within just four weeks after its introduction to Taiwan’s cinema. Thus, TIPO was convinced that “GODZILLA” has been widely recognized and achieved the status of well-known trademark before the opposed trademark was filed in 2019.

2.    As to similarity, TIPO noted that both “Godzilla Gear” and Toho’s “GODZILLA” feature the word “Godzilla”, and such word would constitute the main portion of trademark upon being seen by ordinary consumers. Thus, the visual appearance, pronunciation, and concept of the two trademarks are highly similar to each other.

3.    The word “Godzilla” is created by Toho and has no ordinary meaning. Therefore, it is highly distinctive, and consumers will have strong tendency to view it as trademark.

4.    Aside from appearing in the monster movies, Toho’s “GODZILLA” has been widely used on various types of merchandise, such as apparels, movie posters, stationery, and toys. Although the opposed trademark is applied for use in export/import and online auction service, which are not the same as those designated by Toho’s “GODZILLA” trademark, TIPO posited that given the well-developed and diverse marketing channels, it is likely that products bearing Toho’s “GODZILLA” are also supplied through the import/export or online service. Therefore, TIPO considers that the designated services of the opposed trademark are associated with the products designated by Toho’s “GODZILLA”.

Based on the aforesaid reasons, TIPO sided with “GODZILLA” and cancelled “Godzilla Gear” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SnRWUzNNYmJ0bkpBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true          

NBA successful in cancelling “Battle Bee” trademark in view of similarity with its registered trademark for “Charlotte Hornets”

On August 17, 2020, Taiwan’s Intellectual Property Office ("TIPO") sided with NBA Properties, Inc. (“NBA”), and ruled that the “Battle Bee” trademark (Reg. No. 01941799, see below) should be cancelled due to similarity with NBA’s registered trademark for the team “Charlotte Hornets” (Reg. No. 01682798, see below).

(Reg. No. 01941799)

(Reg. No. 01682798)

On March 19, 2018, the opposed trademark, “Battle Bee”, was filed and applied for use in goods under Class 12, including automobile, wheel, seats for automobile, automobile parts, pipe, brake, water tank, etc. The opposed trademark was granted on October 1, 2018. NBA filed opposition against the “Battle Bee” trademark on December 28, 2018, alleging violation of Trademark act.

Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such mark is identical with or similar to another person’s well-known trademark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark, unless the proprietor of the said well-known trademark consents to the application.

TIPO found for NBA based on the following reasons:

1.    First of all, there were large amount of records submitted by NBA showing that at the time the opposed trademark was filed, NBA’s registered trademark “Charlotte Hornets” has already been famous and well-known in the relevant public. For example, “Charlotte Hornets” was registered in 2014, and such trademark has been recognized by sport fans in Taiwan through the wide TV broadcast of games, and news coverage. In particular, the owner of team “Charlotte Hornets” is the legendary NBA players Michael Jordan, and Jeremy Lin, the one who created “Linsanity”, also played for the team “Charlotte Hornets”. Thus, “Charlotte Hornets” enjoys high popularity among relevant public in Taiwan.

2.    As to similarity, both “Battle Bee” and NBA’s “Charlotte Hornets” feature the drawing of a bee, with similar style in portraying the bee’s head, feelers, and wings. Besides, the overall arrangement of the elements presented in the two trademarks are similar as well: both feature a bee as backdrop, with English words displayed horizontally at the center. Thus, “Battle Bee” is similar with “Charlotte Hornet”.

3.    Turning to distinctiveness, TIPO notes that “Charlotte” may refer to the city in the state of North Carolina or a name, and “Hornets” may mean wasp. Thus, “Charlotte Hornets” as a trademark is highly distinctive when used in goods such as recordings of basketball games, sports bag, basketball magazine, jersey, and in services such as production and publication of basketball games recording, basketball training camp, and provision of game information.

4.    TIPO further notes that NBA’s registered trademark “Charlotte Hornets” is not only the team’s icon, but has also been used in wide range of goods, such as apparel, hats, new born baby’s clothes, smartphone holder, bouncy ball, and wristband. Therefore, although “Battle Bee” as a trademark is designated for use in different goods, given “Charlotte Hornets” has been so famous and used in diversified kinds of products, it is still likely that ordinary consumers may misunderstand and be confused that there is license, partnership, or other forms of business relationship between the holders of “Battle Bee” and “Charlotte Hornets.”

 

Based on the aforesaid reasons, TIPO rules that “Battle Bee” should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cHJqNFJ2TGJDeEdZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true