Apple’s “FACE ID” successful in cancelling “FACE ID A Brand New Me”

On December 20, 2017, a Mr. Chen filed trademark application for “FACE ID A Brand New Me”, designated for use in cosmetic products such as facial mask and eye mask. Mr. Chen’s trademark was granted on August 1, 2018 (Reg. No. 01928507, see below)

APPLE Inc. (“APPLE”) filed opposition on October 30, 2018, alleging violation of Article 30.1.11 of Trademark Act. According to APPLE, Mr. Chen’s opposed trademark would cause confusion with APPLE’s own “FACE ID” trademarks (Reg. No. 02071406, 02058689, 02058688, see below).

                                      

Taiwan’s IP Office (“TIPO”) ruled in APPLE’s favor, finding the opposed trademark violated Article 30.1.11 of Trademark Act:

1.    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.

2.    Here, TIPO first found APPLE’s “FACE ID” trademark series have become famous trademarks after APPLE’s successful use through selling and promoting its iPHONE. Based on evidence showing continuous and wide media exposure in local news reports, including the popular Business Next magazines, iKNOW, and voluminous articles posted and shared among bloggers, TIPO agreed that since its introduction to the market in 2017, “FACE ID” as a new feature of iPHONE has gained wide recognition and known as trademark that represents APPLE’s innovative function adopted in the new iPHONE. Although APPLE’s aforesaid use of “FACE ID” was only months before the application date of the opposed trademark, TIPO found it sufficient to prove that APPLE’s “FACE ID” trademarks have become well-known among the relevant consumers before the filing of the opposed trademark.

3.    As to similarity, TIPO noted that the opposed trademark is composed of “FACE ID” (the larger part) and “A Brand New Me” (the smaller part), with a human face embedded in the letter “D”. TIPO posited that ordinary consumers would consider “FACE ID” the main portion of the opposed trademark, which is highly similar with APPLE’s aforesaid well-known “FACE ID” trademarks. Further, both the opposed trademark and APPLE’s cited trademarks have similar human face design embedded in their letter “D”. As such, TIPO considered the opposed trademark highly similar with APPLE’s aforesaid famous trademarks.

4.    While the opposed trademark is applied for use in cosmetic products, which are different than those designated by APPLE’s aforesaid trademarks, TIPO found APPLE’s aforesaid trademarks are more famous and have not been widely used by others prior to APPLE’s registration. In fact, before the priority date of APPLE’s aforesaid trademarks, there is only one “FACE ID” trademark registered in Taiwan. Thus, if the opposed trademark is allowed to co-exist, the uniqueness and distinctiveness of APPLE’s famous trademarks may be diluted.

 

Given the well-known status of APPLE’s “FACE ID” trademarks, the high similarity between the opposed trademark and APPLE’s cited trademarks, and the fact that “FACE ID” as a trademark is unique and has not been widely used in other goods or services, TIPO ruled that it is likely that the registration of the opposed trademark may dilute the distinctiveness of APPLE’s well-known trademarks. Accordingly, TIPO cancelled the opposed trademark.   

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUVFaU9NZWZ3b3hYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true