When speaking of 101 in Taiwan, what is the thing that would immediately pop up in your mind?
If
you like shopping and watching the gorgeous New Year fireworks in Taiwan, then
Taipei 101 is probably the thing that would come to your mind. “Taipei 101” is
famous not only because it’s the name of the well-known financial building, but
also because its trademark owner, Taipei Financial Center Corp (“TFC”), has
been relentless on going after trademark featuring “101” over the years.
On September 25, 2020, TFC was again successful in cancelling another trademark that popped up on its radar. This time, it’s “Magic 101 Store” (“Magic 101”, Reg. No. 01942756, see below), which is designated for use in services including food retail and wholesale, advertising space leasing, and trade show preparation.
According to TFC, Magic 101 shall be cancelled for violating Article 30.1.11 of Trademark Act, which prohibits registration of a trademark that is similar with other’s well-known trademark so that it may cause confusion among the relevant public. Taiwan’s IP Office (“TIPO”) agreed and found for TFC based on the following reasons:
1. The trademarks cited by TFC, including its registered “101” and “Taipei 101” trademarks (Reg. No. 177868, 165569, and165568, see below), have become famous due to TFC’s continuous and consistent use in providing its shopping, entertaining, and catering service throughout the past decade. Its active use of trademarks, together with its active involvement in popular events such as New Year fireworks and Taipei 101 Run Up, have made “Taipei 101” and “101” become well-known trademarks in the fields of shopping and department store services. To the contrary, TIPO noted that there is little evidence of use submitted by “Magic 101”.
2. Turning to similarity, TIPO found that although there are phrase “THE FRANCHISE GLOBAL” and butterfly design presented in the opposed trademark, the existence of “101” is emphasized in bold fonts with special design on its “0”, which makes “101” the attractive and most distinctive portion of “Magic 101”. Besides, TIPO also noted that the stylized “0” adopted by “Magic 101” is almost identical to the “0” presented in TFC’s “101”. While pure numbers of “101” are not distinctive, TIPO acknowledged that TFC’s long term use of “Taipei 101” and “101” in providing its service has established strong distinctiveness for “101” among the relevant consumers. Since both “Magic 101”, “101”, and “Taipei 101” all feature and emphasize “101” as their main distinctive portions, TIPO found “Magic 101” similar with TFC’s “101” and “Taipei 101”.
3. With regard to the designated services, “Magic 101” was applied for use in services like retail and wholesale, advertising space leasing, etc. TIPO was of the view that these services are highly associated with shopping and department store services designated by TFC’s “Taipei 101” and “101”.
4. Given that TFC’s “Taipei 101” and “101” trademarks have become famous and gained high distinctiveness in the fields of shopping and department store services, that “Magic 101” is similar with “Taipei 101” and “101”, and that the designated services of “Magic 101” are highly associated with those of “Taipei 101”, TIPO determined that “Magic 101” would cause confusion with TFC’s famous “Taipei 101” and “101” and thus violates Article 30.1.11 of Trademark Act.
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