Victoria Beckham (“Requester”) filed opposition against VB JAPAN TECHNOLOGY CO., LTD. (“VB Japan”) on August 14, 2019, contending that VB as a trademark is first used by Requester and has become famous when VB Japan filed application for the opposed trademark (Reg. No. 01988437, see below). Thus, the Requester asserted that the opposed trademark shall be cancelled because VB Japan filed the application with the intent to imitate Requester’s famous trademark.
VB Japan argued that Requester’s VB trademark is used for cosmetic product and clothes accessories, but the opposed trademark is applied for use in totally different products, such as grease remover, rust remover, decontamination volatile oil, clothing softener, laundry bleach, towel, and wet wipes. Besides, “VB” represents “virus” and “block”, which implies VB Japan’s business and specialty. In sum, consumers will not find VB Japan’s opposed trademark similar with Requester’s VB brand.
Taiwan’s IP Office (“TIPO”) made its determination on December 18, 2020, siding with VB Japan:
1.
Article
30.1.12 of Trademark Act provides that a mark shall not be registered if such
mark is 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, and the application is filed with
the intent to imitate the earlier used trademark for the applicant is 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.
2.
Based
on the evidence submitted by the Requester, TIPO agreed that prior to the
filing of VB Japan’s contested trademark on September 27, 2018, Requester’s VB brand
has been put in use in cosmetic and apparel products, including lipstick,
clothing, and pants.
3.
Turning
to similarity between Requester’s and VB Japan’s trademarks, TIPO found them
similar, for both trademarks present the combination of two letters “V” and
“B”. Consumers may find them verbally and visually similar with each other.
4.
Requester
argued that aside from cosmetic products, the VB trademark has been used in clothing
and relevant accessories as well, including handkerchief, which should be
similar with the products designated by VB Japan’s trademark, but TIPO disagreed.
TIPO found that Requester’s VB trademark is used for apparel that can keep warm
and demonstrate fashion, while VB Japan’s trademark is used for cleaning and disinfection
products. Thus, they serve different purposes and should not be viewed as similar
or related products.
5.
Lastly,
TIPO found there is no evidence showing VB Japan has any intent to imitate
Requester’s VB brand. As explained by VB Japan, “VB” represents “Virus” and
“Block”, and has been used as its company name since 2013. Although Requester
argued that “VB” is unique because it is the combination of initials of
Requester’s name, TIPO found there are other registered trademarks in Taiwan
that also feature “VB”. Thus, simply because VB Japan also uses “VB” as
trademark is insufficient to prove it has the intent to imitate Requester’s
brand name or reputation.
Based
on the forgoing reasons, although VB Japan’s registered trademark is similar
with Requester’s brand name, they are used in different products, and there is
no evidence indicating VB Japan’s intent to imitate Requester’s brand when
filing the application for the contested trademark. Hence, Requester’s
opposition was denied by TIPO.
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