On December 3, 2020, Taiwan’s IP Office cancelled the trademark “ART JENGA” (Reg. No. 01943266) due to likelihood of confusion with Pokonobe Associates’ ("Pokonobe") registered “JENGA” trademark.
The application for the opposed trademark, “ART JENGA” (see below), was filed on December 28, 2017, designated for use in services under Class 41, such as educational and training service, entertainment contest, live performance, coaching, arrangement of recreational and educational activities, etc. The opposed trademark was granted on October 1, 2018, and Pokonobe filed opposition on December 27, 2018, citing violation of Article 30.1.11 of Trademark Act.
TIPO sided with Pokonobe, finding that the registration of “ART JENGA”
would cause confusion with Pokonobe’s “JENGA”:
1. The
well-known status of “JENGA”
TIPO agrees with Pokonobe that “JENGA” has become well-known in Taiwan. Pokonobe registered “JENGA” in Taiwan in as early as 1994 (Reg. No. 00626795, see below), and has been promoting the popularity of its “JENGA” building blocks since then, including its continuous use in its toy products and extensive worldwide exposure on social media platforms such as YouTube and Facebook.
2. The
similarity between “JENGA” and “ART JENGA”
The
only difference between “JENGA” and “ART JENGA” is “ART”, which is an ordinary
and common word with little distinctiveness. Therefore, consumers in general
will view “JENGA” as the main portion of “ART JENGA”, and might consider it similar
with Pokonobe’s “JENGA”.
3. The
strength of the opposing trademark
“JENGA”
is quite unique and not a commonly seen word. TIPO also notes that “JENGA” has
not been widely registered as a trademark in Taiwan. Aside from Pokonobe’s opposing
trademark, TIPO only finds “Jenga Food”, a trademark registered for restaurant
service, that also features “JENGA” in Taiwan. Thus, “JENGO” is highly
distinctive and consumers are more inclined to view it as the source of goods
or service.
4. Other
factors:
TIPO is aware of the fact that Pokonobe has been using the registered trademark in diversified type of products, such as clothing and hats. In addition, block stacking itself is no longer restricted to individual use only. Instead, it has become a popular game or contest that usually involves participation of multiple parties, which is highly recreational and educational. To this end, the services that “ART JENGA” is applied for use, e.g., educational and entertainment contest, are associated with Pokonobe’s ”JENGA” trademark.
Based on the well-known status and high
distinctiveness of Pokonobe’s “JENGA“ trademark, the similarity between “JENGA”
and “ART JENGA”, and the association found between the designated services of
“ART JENGA” and Pokonobe’s “JENGA” trademark, TIPO considers there might be
confusion caused by the registration of “ART JENGA”, and thus cancelled the
opposed trademark accordingly.
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