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.
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