A Mr. Kao filed trademark application for “樂高兄弟LEKAO BROS” (“LEKAO BROS”) on May 8, 2019, designated for use in goods under class 25, including shirt, pants, sportswear, raincoat, socks, etc. Mr. Kao’s trademark application was granted on November 1, 2019. (Reg. No. 02019884, see below)
Taiwan’s IP Office (“TIPO”) ruled in favor of LEGO on December 31, 2020:
1.
LEGO
alleged, and TIPO agreed, that through worldwide continuous use, LEGO’s
asserted trademarks have already become well-known in products like clothing, hat,
shoes, and boots. LEGO not only provided its worldwide trademark registrations,
but also records of global revenue, advertising campaign, and market reports,
which support the high distinctiveness and well-known status of LEGO’s opposing
trademarks.
2.
As
to similarity, TIPO noted that the opposed trademark consists of “LEKAO BROS”
and the corresponding Chinese characters “樂高兄弟”. Since ”BROS” and “兄弟” refer to “brother”, which are ordinary words, TIPO was of
the view that ordinary consumers would find “LEKAO” and “樂高” the most attractive portion
of the contested trademark. Therefore, TIPO posited that the main distinctive
portion of “樂高兄弟LEKAO BROS” are “LEKAO” and “樂高“, and determined that it is visually
and verbally similar with LEGO’s aforesaid opposing trademarks.
3.
Turning
to the similarity of the designated products, TIPO found LEGO’s opposing
trademarks and “樂高兄弟LEKAO BROS” are applied for use in similar goods. For
example, LEGO’s trademarks are also used in apparel, shoes, boots, and hats. Therefore, both trademarks are used in clothing
products that could keep warm or provide decorative feature. Accordingly, TIPO concluded
that the designated products of “樂高兄弟LEKAO BROS” are relevant to or associated with those of LEGO’s
opposing trademarks, and cancelled “樂高兄弟LEKAO BROS” in view of violation of Article 30.1.10 of
Trademark Act.
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