Eagle Creek’s “PACK-IT” unable to cancel Skyline Marketing’s “pack all” in trademark opposition proceeding

On November 3, 2020, Taiwan’s IP Office (“TIPO”) rejected opposition filed by Eagle Creek Inc. (“Eagle Creek”) against Skyline Marketing LLC’s (“Skyline Marketing”) “pack all” trademark. 

The opposed trademark, “pack all”, was filed on July 13, 2018, designated for use in goods under Class 9, such as swimming goggles, glasses, wires, selfie stick, earphones, scale, electronic scale, smart watch, and thermometer. Skyline Marketing’s “pack all” was granted on February 16, 2019 (Reg. No. 01970144, see below).

 

Eagle Creek filed opposition against “pack all” on May 16, 2019, citing violation of Article 30.1.11 and 30.1.12 of Trademark Act. More specifically, Eagle Creek contended that Skyline Marketing’s “pack all” would cause confusion with or dilute the distinctiveness of Eagle Creek’s famous “PACK-IT” trademark (Reg. No. 01707277, see below).

TIPO sided with Skyline Marketing, finding no violation of the cited Trademark Act:

1.    Article 30.1.11 and 30.1.12 of Trademark Act provide that:

“A mark shall not be registered when such mark:

Being 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 (Article 30.1.11);

being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration (Article 30.1.12).”

2.    With regard to Article 30.1.11, TIPO noted that the applicability of Article 30.1.11 premises upon the fact that the opposing trademark, which in this case is Eagle Creek’s “PACK-IT”, must be a well-known trademark. However, upon reviewing all the evidence of trademark use submitted by Eagle Creek, TIPO found the evidence submitted fell short, because most of the documents are in foreign language (I.e., English). Thus, it is unclear if local consumers could recognize and form familiarity with Eagle Creek’s opposing trademark.

3.    In addition, TIPO opines that since “pack” could mean packaging and wrapping, “pack” is not that distinctive when used in goods that serve the functions of packaging or wrapping. In this case, TIPO found Eagle Creek’s “PACK-IT” is designated for use in goods like backpack, book bag, waist bag, wallet and hand bag. Thus, Eagle Creek’s “PACK-IT” is not highly distinctive and would not form strong impression among the relevant consumers in Taiwan.

4.    Since Eagle Creek’s “PACK-IT” is not highly distinctive and less likely to form strong impression amount consumers, and Eagle Creek was unable to provide sufficient evidence showing its “PACK-IT” has built strong recognizability among local consumers here in Taiwan, TIPO found Article 30.1.11 is not applicable in this case.

5.    As to Article 30.1.12, TIPO noted that this statute is applicable when there is evidence showing the opposed trademark was filed with intent to imitate a similar senior trademark that is used in identical or similar goods or service. Again, TIPO found there was no such evidence in this case.

6.    First, as noted above, evidence submitted by Eagle Creek was insufficient to show “PACK-IT” has become a well-known trademark in Taiwan. Thus, there should be little incentive for Skyline Marketing to file “pack all” in order to imitate Eagle Creek’s “PACK-IT”. Additionally, “PACK-IT” was applied for use in various kinds of bags, and their functions, source of manufacture, and sales channel are not related to goods like goggles, glasses, scale, and smart watch, which are designated by Skyline Marketing’s “pack all” trademark. Since “PACK-IT” is not well-known and “pack all” is applied for use in different kinds of goods, TIPO found there was no reasonable ground to support a finding of intent to imitate on the part of Skyline Marketing. Therefore, TIPO ruled that Article 30.1.12 is not applicable.

In view of the above, Eagle Creek’s opposition against “pack all” was denied by TIPO.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4emZqVE9QL3pqN3I0dm83YWNqNlhnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true