On June 11, 2020, NIKE INNOVATE C.V. (“NIKE”) filed opposition against “JUST TRI IT” (Reg. No. 02047547, see below), alleging violation of Article 30.1.10 of Trademark Law. Taiwan’s IP Office (“TIPO”) sided with NIKE on January 15, 2021, finding “JUST TRI IT” confusingly similar with NIKE’s famous “JUST DO IT” trademark.
The contested trademark was filed on March 8, 2017, designated for use in goods under class 25, including sportswear, swimming suits, jacket, coats, socks, etc. TIPO granted the registration of the contested trademark on March 16, 2020. However, NIKE contended that the contested trademark would cause confusion with its famous “JUST DO IT” trademark (Reg. No. 01093322, 01665105, and 01732276, see below).
TIPO’s reasons are as follows:
1. TIPO noted that the contested trademark and NIKE’s aforesaid trademarks are composed of the same words, except that the contested trademark features “TRI” it, while NIKE features “DO” it. TIPO further noted that “JUST TRI IT” pronounced like “just try it”, which conveys similar encouraging and inspiring message as NIKE’s “JUST DO IT”. Thus, TIPO determined the contested trademark conceptually and visually similar with NIKE’s “JUST DO IT” trademarks.
2. Turning to the designated goods, TIPO found, like the contested trademark, NIKE’s cited trademarks also are applied for use in similar apparel products, such as shoes, hat, clothing, and sneakers. These products either perform similar function, or are displayed or sold in the same stores. Therefore, TIPO opined the products designated by the contested trademark are associated or related to products designated by NIKE’s aforesaid trademarks.
3. As to the strength of NIKE’s trademark, TIPO was aware that “JUST DO IT” is distinctive and has become well-known in sportswear products through continuous marketing and worldwide use. Since there was no record submitted to support the use of “JUST TRI IT”, TIPO opined that the relevant consumers shall be more familiar with NIKE’s famous trademarks.
In view of the above, since “JUST TRI IT” is similar with NIKE’s “JUST DO IT”, and is applied for use in similar goods, TIPO opined there exists likelihood of confusion among the relevant consumers. Hence, TIPO found the registration of “JUST TRI IT” violates Article 30.1.10 of Trademark Law, and shall be cancelled accordingly.
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