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.
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