On July 23, 2019, a Mr. Chen filed trademark application for “POLO SMART”, designated for use in goods under class 25, including clothing gloves; aprons; clothes; pants; underwear; sleep masks; neckties; swimwear; shirts; suits; coats; sportswear; raincoats; boots; shoes; scarves; headscarves; caps; socks; and belts. Registration of “POLO SMART” was granted on March 16,2020 (Reg. No. 02047561, see below).
POLO/LAUREN COMPANY L.P. (“POLO/LAUREN”) filed opposition against “POLO SMART” on June 5, 2020, contending that registration of “POLO SMART” would cause confusion with POLO/LAUREN’s registered “POLO” trademarks (Reg. No. 139936 and No. 321855, see below).
On December 25, 2020, Taiwan’s IP Office sided with POLO/LAUREN, ruling that “POLO SMART” should be cancelled in view of violation of Article 30.1.10 of Trademark Act.
1.
Article
30.1.10 of Trademark Act provides that a mark shall not be registered if such
mark is identical with or similar to another person’s registered trademark or
earlier filed trademark and to be applied for goods or services identical with
or similar to those for which the registered trademark is protected or the
earlier filed trademark is designated, and hence there exists a likelihood of
confusion on relevant consumers.
2.
With
regard to similarity, TIPO finds that “POLO SMART” and POLO/LAUREN’s aforesaid No.
321855 trademark both share the same and distinctive word “POLO”, and the drawing
presented in the upper part of “POLO SMART” also expresses the idea of polo, which
is the same kind of sport that is also featured in POLO/LAUREN’s cited
trademarks. Thus, TIPO determines that “POLO SMART” are visually and
conceptually similar with POLO/LAUREN‘s cited trademarks.
3.
As
to the designated goods, TIPO noted that “POLO SMART” is applied for use in apparel
and its accessories like clothing gloves, pants, underwear, sleep masks, shirts,
shoes, caps, and belts. However, they are associated with or related to the
designated goods of POLO/LAUREN’s cited trademarks. For example, TIPO finds
that similarly, POLO/LAUREN’s aforesaid No. 321855 trademark is applied for use
in men's and women's clothes, T-shirts, long-sleeved cotton sweaters, sweaters,
jackets, pants and windproof jackets. Since these products perform similar
function and meet similar need, TIPO determines “POLO SMART” is applied for use
in similar goods.
4.
When
it comes to the strength of trademark, TIPO notes that POLO/LAUREN has
submitted sufficient evidence proving the continuous use, popularity, and
recognizability of its opposing trademarks. In addition to apparel products,
advertising materials, webpage, and stores that display the cited trademarks,
there are also court decisions affirming the findings that POLO/LAUREN’s cited
trademarks have become well-known in Taiwan.
5. In contrast, there is little evidence submitted to prove the use of “POLO SMART”. Hence, TIPO considers POLO/LAUREN’s cited trademarks more famous and consumers should be more familiar with POLO/LAUREN’s cited trademarks. That is to say, POLO/LAUREN’s cited trademarks shall be given more protection over the opposed “POLO SMART”.
Given the similarity between “POLO SMART” and POLO/LAUREN’s cited trademarks, the similarity of goods that the trademarks are applied for use, and the fact that POLO/LAUREN’s cited trademarks are well-known and consumers are more familiar with POLO/LAUREN’s cited trademarks, TIPO considers the registration of “POLO SMART” is likely to cause confusion with POLO/LAUREN’s cited trademarks, and cancels the opposed trademark accordingly.
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