On April 30, 2021, Taiwan’s IP Office (“TIPO”) sided with Bentley Motors Limited (“BML”), ruling that the trademark filed by East Glory Holding Co. Ltd. (“EGHC”) should be cancelled due to likelihood of confusion with BML’s famous “BENTLEY” trademark, even though EGHC’s trademark is designated for use in goods unrelated to automobile or its parts.
In as early as 1982, BML had acquired
trademark registration in Taiwan for its “BENTLEY” trademark (Reg. No.
00173595, see below), which is designated for use in engine, transmission gear,
wheel brake, etc. Through BML’s continuous use and marketing, such as appointing
distributorship and establishing service centers, “BENTLEY” has gained wide
recognition and popularity in Taiwan’s local market. Thus, TIPO affirmed that
BML’s “BENTLEY” has gained the status of a well-known trademark.
EGHC’s contested trademark, “BENTLEY” (Reg. No. 02009211, see below), was filed on November 9, 2018, and granted on September 1, 2019, designated for use in goods like vacuum flask, aromatherapy bottle, gloves, etc., which are not related to automobile and its relevant products. BML filed opposition against EGHC on November 29, 2019, alleging that the registration of EGHC’s trademark would cause confusion with BML’s well-known “BENTLEY” trademark.
TIPO’s determination was in BML’s favor,
finding EGHC’s trademark might still cause confusion with BML’s “BENTLEY”:
1.
The main issue here is whether
EGHC’s registration violates Article 30.1.11 of Trademark Law, which provides
that a mark shall not be registered if such a mark is being identical with or
similar to another person’s well-known trademark or mark, and hence there
exists a likelihood of confusion on the relevant public or a likelihood of
dilution of the distinctiveness or reputation of the said well-known trademark
or mark.
2.
As to the status of BML’s
“BENTLEY” trademark, TIPO confirmed that before the filing date of EGHC’s
contested trademark, BML’s “BENTLEY” is distinctive and has already been famous
in products and services that are related to automobile and its parts.
3.
Turning to similarity, TIPO
noted that BML’s and EGHC’s trademarks all share the same letters, i.e.,
“BENTLEY”, with slight variation of font and size. Thus, it is undisputed that
EGHC’s trademark is highly similar with BML’s cited trademark.
4.
With regard to the similarity
of designated goods, TIPO noted that EGHC’s “BENTLEY” was applied for use in
different kind of goods. However, TIPO still found in BML’s favor, because,
first, based on the volume of evidence of trademark use, the relevant public is
more familiar with BML’s “BENTLEY” trademark; and second, there is sufficient
evidence showing that over the years, BML has expanded the use of its “BENTLEY”
to products that are not related to automobile, such as watches, necktie, and
perfume. As such, it is likely that BML may further expand its product line to
the same category as is designated by EGHC’s contested trademark. Even though
EGHC’s trademark is applied for use in products that are unrelated to
automobile, such difference is neutralized by the facts that consumers are more
familiar with BML’s “BENTLEY”, and that BML’s “BENTLEY” has been used in
diversified kinds of goods and might one day be used in the same product
category.
In view of the above, despite there is
difference between the designated goods, TIPO finds consumers may still
misconceive that EGHC’s contested trademark is associated with BML’s famous
“BENTLEY” trademark. Hence, TIPO cancelled EGHC’s trademark in accordance with
Article 30.1.11.
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