“Ticpods” was cancelled by Taiwan’s IP Office in view of Apple’s “pod/pods” trademark series

Mobvoi Inc. (“Mobvoi”), an AI company focusing on providing voice interaction technology, filed trademark application for “Ticpods” on May 23, 2019, designated for use in goods under class 9, including wireless earphones, headsets, mobile phone applications, speakers, smart watches, portable media player, etc. Mobvoi’s trademark application was granted on January 1, 2020 (Reg. No. 02031778, see below)

Apple Inc. (“Apple”) filed opposition against “Ticpods” on March 30, 2020, alleging registration of “Ticpods” would cause confusion with Apple’s registered “Pod” (Reg. No. 02016075), “AIRPODS” (Reg. No. 01867229), “HOMEPOD” (Reg. No. 01938305), “EARPODS” (Reg. No. 01631761) and “iPod” trademarks (Reg. No. 01309186) (see below)

Taiwan’s IP Office ruled in Apple’s favor on January 14, 2021, citing violation of Article 30.1.10 of Trademark Law:

1.    Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark is: 1) identical with or similar to another person’s registered trademark or earlier filed trademark and 2) 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 3) hence there exists a likelihood of confusion on relevant consumers.

2.    Here, TIPO noted that prior to the filing of Mobvoi’s “Ticpods”, Apple has registered series of trademarks that also end with “pod/pods”. Upon seeing Mobvoi’s “Ticpods”, consumers may form the impression that such mark belongs to Apple’s aforesaid trademark series. Thus, TIPO considered Mobvoi’s “Ticpods” similar with Apple’s opposing trademarks.

3.    As to the designated goods, Mobvoi’s “Ticpods” was applied for use in goods under class 9. Similarly, Apple’s opposing trademarks were also designated for use in relevant products under the same class, such as speaker, computer, computer hardware, video and audio mixer, car stereo, headset, etc. Therefore, TIPO considered Mobvoi’s contested trademark was applied for use in products that are similar with Apple’s trademarks.

4.    TIPO further noted that based on Apple’s submitted evidence, Apple’s opposing trademarks are distinctive and have been used for years prior to Mobvoi’s application in Taiwan. For example, Apple’s “iPOD” was filed in 2006 as the name of its famous multimedia player, iPod, which was launched in as early as 2001. In contrast, Mobvoi provided little supporting documents showing its actual use of “Ticpods”. Therefore, TIPO found consumers in Taiwan shall be more familiar with Apple’s opposing trademarks.  

Based on the aforesaid reasons, TIPO opined that “Ticpods” is confusingly similar with Apple’s cited trademarks, and cancelled “Ticpods” accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4TEVLSFVnTmRGSzh5TVlJNURZTUtPZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true