Taiwan’s IP Office Confirms “IMAX” Is A Well-known Trademark And Cancelled “IIMAX” In Opposition Proceeding

In an opposition proceeding initiated by IMAX Corp. against “IIMAX”, Taiwan’s IP Office (“TIPO”) found “IIMAX” similar with “IMAX”, and may cause confusion among the relevant consumers. Thus, TIPO found in favor of “IMAX” and cancelled “IIMAX” accordingly.

 

“IIMAX” was filed on April 18, 2018, and designated for use in various kinds of safety helmets and protective equipment, such as safety helmet, engineering helmet, goggles, safety helmet lens, sports helmet, riding helmet, safety goggles, sports protection eyepieces, safety protective clothing for motorcycle sports, diving helmets, diving gloves, swimming goggles, and life jackets. “IIMAX” was subsequently granted on December 1, 2018 (Reg. No. 01954460, see below).

IMAX Corp. opposed on February 27, 2019, contending that the registration of “IIMAX” would cause confusion with its famous “IMAX” trademarks (Reg. No. 346099, 341732, 023437, see blow).

                            

TIPO sided with “IMAX”, finding registration of “IIMAX” violated Article 30.1.11 of Trademark Act.

1.      Article 30.1.11 of Trademark Act provides that a trademark shall not be registered if said trademark is “identical with or similar to another person’s well-known trademark or mark, 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 or mark.”

2.      In this case, TIPO first found “IMAX”, after years of continuous use in screening and filming service, has become a well-known trademark that not only refers to specific filming technology, but also represents IMAX Corp.’s unique and innovative filming system. Aside from obtaining trademark registrations, evidence also shows that IMAX Corp.’s “IMAX” service has been widely used in more than 1,000 theaters around the globe, including at least 6 theaters and 3 national museums in Taiwan. Thus, TIPO held that prior to the filing of “IIMAX” on April 18, 2018, “IMAX” has already become a well-known trademark in the field of cinematography and the relevant hardware and software service.

3.      In terms of similarity, “IIMAX” and “IMAX” share the same word “MAX”, and the difference is minor in that “IIMAX” starts with “II” while “IMAX” starts with “I”. TIPO therefore found “IIMAX” similar with “IMAX” due to their similar pronunciation and visual appearance.

4.      TIPO noted that “IIMAX” was applied for use in goods including sports helmet and clothing, which are for recreational purpose. Since “IMAX” is also used in providing recreational (i.e., movie) service, TIPO considers that the designated service or goods may serve the same group of consumers, and that it is likely that these consumers may misunderstand that the service or goods are originated from the same source or affiliated companies.

After considering the well-known status of “IMAX”, the similarity between “IMAX” and “IIMAX”, the distinctiveness of “IMAX”, and the fact that both trademarks are designated for use in recreational goods or service, TIPO ruled that “IIMAX” should be subject to Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4T2dyNDRmZWVNWWFCQWdxb3N2cngrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true