“MANGO” beat “mango tree” in trademark opposition proceeding

On February 24, 2021, Taiwan’s IP Office (“TIPO”) cancelled trademark “mangotree芒果樹”, finding it similar with Consolidated Artists BV’s “MANGO” trademark.

 

The cancelled trademark, “mangotree芒果樹”, was filed on January 2, 2019, designated for use in goods under class 14, including jewelry, watches, metal artwork, accessories for earrings, pendant box, etc. The application was granted on May 1, 2020 (Reg. No. 02056120, see below).

Consolidated Artists BV filed opposition against “mangotree芒果樹” on July 30, 2020, contending that the registration of “mangotree芒果樹” would cause confusion with its famous “MANGO” trademark (Reg. No. 01047182, see below).

Taiwan’s IP Office (“TIPO”) found in favor of Consolidated Artists BV, ruling that the registration of “mangotree芒果樹” violates Article 30.1.11 of Trademark Law:

1.     Per Article 30.1.11 of Trademark Law, a mark shall not be registered if such mark is similar with other’s famous trademark and thus may cause confusion among the relevant public, or may harm the reputation or dilute the distinctiveness of other’s famous trademark.

2.     Here, TIPO was convinced that based on the worldwide registration records, news reports, and sales records, the cited “MANGO” trademark is already a well-known trademark in clothing products and the relevant accessories prior to the filing date of “mangotree芒果樹”.

3.     As to similarity, TIPO found the opposed trademark “mangotree芒果樹” also presents “mango”, which is the same word as presented in the cited “MANGO” trademark. Although the opposed trademark further presents “tree” and “芒果樹”, TIPO determined that these additional elements would not make the opposed trademark distinguishable. It is because “tree” is ordinarily language, which is not distinctive, and “芒果樹” also refers to “mango”. As such, ordinary consumers would find “MANGO” conceptually and visually similar with “mangotree芒果樹”. 

4.     TIPO further noted that there is no evidence submitted to support the use of“mangotree芒果樹”. To the contrary, Consolidated Artists BV submitted lots of evidence to support its use of “MANGO” trademark. For example, sales records show that “MANGO” is not only used in apparel, but also used in other products such as jewelry, watches, and glasses. Therefore, TIPO was convinced that “MANGO” as a trademark is widely used in various products, and that the consumers are more familiar with “MANGO” trademark.

 

In light of the above, since “mangotree芒果樹” is quite similar with the famous trademark “MANGO”, and both “MANGO” and “mangotree芒果樹” are applied for use in similar products such as jewelry and its accessories, which provide similar decorative function, TIPO determined that registration of “mangotree芒果樹” may cause confusion among the relevant consumers. Thus, the opposed trademark “mangotree芒果樹” was cancelled based on Article 30.1.11 of Trademark Law. 

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OWxuQnQ1MW44SnBxZXdUQk45Nm5iZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true