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.
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