Taiwan ZMAX Optech Co. Ltd. (“TZO”), a company that focuses on optical lens and optoelectronic products, filed trademark application for its “ZMAX” on November 12, 2018, which was later granted on June 16, 2019. TZO’s “ZMAX” was applied for use in service under Class 35, and goods under Class 9, including, among the others, projection equipment, astrophotography lens, optical lens, sighting telescope for firearms, sight for artillery, optical glass, microscope, refracting telescope, stereoscopic device, etc. (Reg. No. 01994932, see below).
On September 12, 2019, IMAX Corporation (“IMAX”) filed trademark opposition against TZO’s “ZMAX”, contending that registration of “ZMAX” under Class 9 would cause confusion with IMAX’s registered “IMAX” trademarks (Reg. No. 00023437, 00341732, and 00346099, see below).
On December 11, 2020, Taiwan’s IP Office (“TIPO”) sided with TZO, determining that TZO’s “ZMAX” is not similar with “IMAX”, and would not cause confusion among the relevant public.
1.
IMAX argues, and TIPO agrees,
that the cited “IMAX” trademark series are all famous and well-known prior to the
filing date of “ZMAX”. However, TIPO considers “IMAX” as a trademark is only
famous within the field of filming service and movie industry, because there is
little record showing “IMAX” has been used in other business. Thus, “IMAX” maybe
famous within specific industry or market, but not so famous among the “general”
public. After all, the services or products “IMAX” represents are facilities
for providing entertainment service to consumers, not products or services that
consumers would necessarily use from time to time in their daily life.
2.
Although “IMAX” is distinctive
through its long time use in providing the relevant products and services
worldwide, TIPO finds there are many other trademarks registered under Class 9 which
also consist of “MAX”. For example, there are “AMAX”, “UMAX”, “MAX”, “EMAX”,
“G-MAX”, “X-MAX”, “VMAX”, and “Z-MAX”. In particular, there are many co-existing
trademarks featuring “MAX”, such as “TuMAX” and “Q’MAX”, designated for use in
filming machine and video recorder, which are similar with the goods “IMAX” is
applied for use. Therefore, TIPO is of the view that “MAX” is quite common in
the relevant business, and consumers should be able to distinguish the source
of the goods and services that use “MAX” as part of the trademark.
3.
While TIPO is aware of the fact
that “ZMAX” and “IMAX” both share the same word “MAX”, TIPO thinks “MAX” is
quite common, so the difference between the initial letters, i.e., “Z” versus
“I”, will help consumers distinguish the two trademarks. Further, the opposed
“ZMAX” is embedded in a blue oval shape, while “IMAX” is composed of pure four
letters. Hence, no matter from the perspective of appearance, pronunciation, or
underlying concept, “ZMAX” should not be found similar with “IMAX”.
4.
As to the designated use for
goods, TIPO finds some of ZMAX’s designated goods, such as projection
equipment, is similar with IMAX’s. However, TIPO notes that ZMAX is also
applied for use in other different goods, such as microscope, astrophotography
lens, and optical lens. These products are different from IMAX’s designated goods
because the former are used for observation or sighting, while the latter are
used for filming or movie playing.
5. TIPO further notes that there is considerable amount of evidence showing “ZMAX” is actively used in providing TZO’s products and service, including posters used in exhibition and the purchase orders. Therefore, TIPO is convinced that both “IMAX” and “ZMAX” are actively used in the relevant products.
6. In view of the above, since “MAX” is widely used for products in Class 9, consumers should be able distinguish trademarks that feature “MAX”. Simply because “ZMAX” also features “MAX” does not necessarily make it similar with “IMAX”. Besides, “ZMAX” itself is distinctive and is visually and verbally distinguishable from “IMAX”. Even though some of the products designated by “ZMAX” are similar with those by “IMAX”, TIPO opines there is no likelihood that consumers will be confused. Therefore, IMAX’s opposition against TZO’s “ZMAX” is denied.
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