PRICE COSTCO INTERNATIONAL, INC. (“PCI”), the registrant of “COSTCO” trademarks in Taiwan (Reg. No. 00116362 and 00097655, see below), filed opposition against SINOPACKER INTERNATIONAL INC. (“SINOPACKER”) on August 15, 2019, alleging that SINOPACKER’s “bestco” trademark would cause confusion with PCI’s “COSTCO” trademarks.
SINOPACKER’s “bestco” (Reg. No. 01986500, see below) was filed on October 3, 2018, and granted on May 16, 2019, designated for use in goods under Class 16, including cling film, plastic packaging, plastic bag, toilet paper, paper handkerchiefs, paper containers, office paper, etc. PCI contended that registration of “bestco” violated Article 30.1.10, Article 30.1.11, and Article 30.1.12 of Trademark Law.
On April 29, 2021, Taiwan’s IP Office (“TIPO”) sided with SINOPACKER, finding “bestco” is not confusingly similar with “COSTCO”, and the registration of “bestco” would not damage or dilute the reputation of the famous “COSTCO” trademark:
1.
PCI argued, and TIPO agreed,
that the cited trademarks “COSTCO” have been well-known among the relevant
consumers in Taiwan after PCI’s successful and continuous marketing. In
comparison to the records submitted by PCI, TIPO found there is little evidence
supporting the use of SINOPACKER’s “bestco”. Thus, TIPO ruled that PCI’s
“COSTCO” is more famous, and the relevant consumers are more familiar with
“COSTCO”.
2.
However, when comparing
“COSTCO” against “bestco”, TIPO found the two trademarks dissimilar with each
other. First of all, the initial two letters of “COSTCO” are “CO”, which are
verbally and visually different from those of “bestco”. In addition, the
contested trademark “bestco” may be viewed as combination of “best” and “co”,
which the consumers may perceive as conveying the meaning of “best company”.
Therefore, TIPO determined that “COSTCO” and “bestco” are verbally, visually,
and conceptually different from each other.
3.
PCI further argued that
SINOPACKER should know its “bestco” is similar with “COSTCO”, because
SINOPACKER once tried to register another similar mark “kestco”, but later
abandoned that mark after PCI filed opposition. Nonetheless, TIPO held the view
that since “bestco” is not similar with “COSTCO”, what SINOPACKER really
thought when it abandoned its another trademark “kestco” is irrelevant to the
determination of similarity in this case.
4.
Turning to the similarity of
goods and services, PCI’s “COSTCO” is applied for use in retail service for
grocery, household goods, and office supplies. TIPO noted that the goods
designated by SINOPACKER’s “bestco” are usually sold and distributed by the
services designated by PCI’s “COSTCO”. Thus, the goods and services designated
by the two trademarks are associated with each other.
5.
TIPO was aware of the fact that
PCI’s “COSTCO” is distinctive, and has been put in use on various kinds of
products and services, such as gas station, optometry, tire inspection, etc.
However, SINOPACKER’s “bestco” is also distinctive. Further, there is no
evidence of actual confusion among the consumers. Thus, although “COSTCO” is
more famous, and “bestco” is also applied for use in goods that are similar or
associated with services designated by “COSTCO”, the likelihood of confusion is
balanced by other factors, including: the degree of similarity between “bestco”
and “COSTCO” is low, “bestco” itself is also a distinctive trademark, and there
is no evidence showing actual confusion. As a result, TIPO held the position
that the registration of “bestco” would not cause confusion with “COSTCO” among
the relevant public.
6.
PCI also argued that
registration of “bestco” is out of bad faith with intent to imitate its famous
“COSTCO”, and may dilute or damage the distinctiveness of “COSTCO”. TIPO did
not side with PCI, because there is no evidence submitted by PCI to prove the
registration of “bestco”, a mark that is not similar with “COSTCO”, would
necessarily damage or dilute the reputation or distinctiveness of “COSTCO”.
Besides, in Taiwan, prior to the filing of SINOPACKER’s “bestco”, there are
already trademarks featuring the same word “BESTCO” filed and registered by
third party, such as Reg. No. 01104908 (“百事可BESTCO”) and 01112651 (百事可BESTCO). Therefore, it is unreasonable for PCI to argued that
SINOPACKER filed application with bad faith simply because its trademark is
“bestco”.
In view of the above, TIPO determined the
registration of “bestco” does not violate the cited Trademark Law, and denied
PCI’s opposition accordingly.
Source:
Note:
Article 30.1.10 of Trademark Law provides that
a trademark 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.
Article 30.1.11 of Trademark Law provides that a trademark shall not be registered if such a mark is
1)
identical with or similar to
another person’s well-known trademark or mark, and
2)
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.
Article 30.1.12 of Trademark Law provides that a
trademark shall not be registered if such a mark is:
1)
identical with or similar to
another person’s earlier used trademark, and
2)
to be applied for goods or
services identical with or similar to those for which the earlier used
trademark is applied, and
3) the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.
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