Hurley Phantom C.V. successful in trademark opposition for its iconic “H” logo

On May 20, 2021, Taiwan’s IP Office (“TIPO”) found the “H” logo registered by Xiang-Hao Clothing Limited (“XH”) confusingly similar with the trademark held by the Hurley Phantom C.V. (“Hurley”), and cancelled XH’s trademark accordingly.

 

Hurley’s asserted trademark, i.e., the No. 01086990 trademark (hereafter ‘990 trademark, see below), was filed on June 6, 2003, and granted on February 16, 2004, designated for use in goods under class 25, including clothes, boots, scarves, ties, hats, etc. 

 

The contested trademark, XH’s No. 01993040 trademark (hereafter ‘040 trademark, see below), was filed on December 22, 2018, and granted on June 16, 2019, designated for use in goods under class 25, such as shirts, pants, jacket, sport wears, suits, school uniforms, vest, etc. 

 

Hurley filed opposition against XH’s ‘040 trademark on September 16, 2019, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. TIPO sided with Hurley, finding registration of XH’s ‘040 trademark violated Article 30.1.10 of Trademark Act.

 

1.     Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such mark is similar with other’s registered trademark and is applied for use in goods or services that are similar with those designated by other’s registered trademark, and hence there exists likelihood of confusion on the relevant public.

 

2.     TIPO first examined the similarity between Hurley’s ‘990 trademark and XH’s ‘040 trademark. TIPO noted that Hurley’s trademark looks like a pair of two giant brackets, while XH’s ‘040 trademark presents additional elements, such as the the backdrop of a four point star and the short dash “-“ in the middle of XH’s “H” logo. However, TIPO opined that visually and conceptually, XH’s trademark still forms a general impression of “H”, which is highly similar with Hurley’s trademark.

 

3.     While XH argued that its contested logo is composed of “X” and “H”, which features the abbreviation of its English company name “Xiang-Hao”, TIPO was of the view that the reason behind the design of a trademark is not always known by the consumers. As such, the connection between XH’s company name and its trademark is not a factor that should be considered when determining similarity.

 

4.     There is less dispute on the similarity between the goods designated by XH’s and by Hurley’s trademarks, as they are both applied for use in apparel and clothing products, which serve similar functions and purposes. Further, TIPO found Hurley’s “H” design unique and distinctive, so it is likely that consumers would use this “H” logo to identify the source of goods or services. 

 

5.     Although XH and Hurley both submitted evidence showing the sale and distribution of their products in Taiwan, TIPO found these evidentiary materials merely showed that Hurley’s and XH’s products indeed were sold in Taiwan, but were insufficient to show their respective market shares and volume of sale. Thus, TIPO was unable to determine which trademark is more popular and enjoys higher recognizability in Taiwan.

 

In view of the above, while TIPO was neutral on whether Hurley’s trademark is more famous than XH’s trademark in Taiwan, TIPO still found XH’s ‘040 trademark confusingly similar with Hurley’s ‘990 trademark. It is because XH’s ‘040 trademark, like Hurley’s ‘990 trademark, also features similar “H” design, and is applied for use on similar products. These similarities, plus the distinctiveness of Hurley’s “H” design, are likely to make consumers believe that XH’s products are associated with or originated from Hurley. Therefore, XH’s trademark was cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UmV4NGsrZ2h1SFc3Q3pKSnREcU83Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Blackberry prevailed in trademark opposition against “RENTBERRY”

On April 15, 2020, Blackberry Limited (“Blackberry”) filed trademark opposition against Rentberry Inc. (“Rentberry”), alleging that the registration of “RENTBERRY” would cause confusion with Blackberry’s “BERRY” and “BLACKBERRY” trademarks (Reg. No. 01288822, 00155052, 01972324, and 01650599, see below)

The contested trademark, “RENTBERRY”, was filed by Rentberry on February 27, 2019, and was granted by Taiwan’s IP Office (“TIPO”) on January 16, 2020 (Reg. No. 02036834, see below). “RENTBERRY” was designated for use in services under class 42, including SaaS, server hosting, computer system design, cloud computing, software consulting, electronic data storage service, etc.

On May 25, 2021, TIPO determined that the contested trademark “RENTBERRY” should be canceled for violating Article 30.1.10 of Trademark Act:

 

1.     Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark and to be applied for use in goods or services identical with or similar to those for which other’s registered trademark is protected, and hence there exists likelihood of confusion on the relevant consumers. 

2.     TIPO finds “RENTBERRY” similar with Blackberry’s “BERRY” and “BLACKBERRY”, for both feature the word “BERRY”. Although the initial word of the contested trademark is “RENT”, which is different from “BLACK”, the initial word of “BLACKBERRY”, TIPO considers “BLACK” is not distinctive and consumers would still focus on the word “BERRY”. Therefore, the appearance of “RENTBERRY” is considered similar with Blackberry’s “BLACKBERRY” and “BERRY”.

3.     As to the designated goods and services, TIPO notes that Blackberry’s trademarks are also applied for use in goods under class 9 and services under class 42, including products like data process equipment, computer, tablet computer, computer software; and services such as SaaS, technical support, software design and development, cloud computing, etc. Thus, the services designated by “RENTBERRY” are highly relevant or similar with those designated by “BLACKBERRY” and “BERRY”.

4.     Additionally, “BLACKBERRY” and “BERRY” are distinctive, for they have no relevancy with the nature or function of the designated products and services under class 9 and class 42. 

5.     Moreover, TIPO finds there is sufficient evidence showing Blackberry has been actively and continuously using its “BLACKBERRY” and “BERRY” trademarks, even though Blackberry’s share in mobile phone market has declined. For example, records showed that in 2017, Blackberry appointed one local agency and 3~4 first-rate distributors in Taiwan for developing and promoting its “BLACKBERRY” brand for cell phone business. Thus, TIPO opines that “BLACKBERRY” and “BERRY” are more famous than Rentberry’s “RENTBERRY” among the relevant consumers.

 

In view of the above, since “RENTBERRY” is similar with “BLACKBERRY” and “BERRY”, is applied for use in similar services, and “BLACKBERRY” and “BERRY” are distinctive and more famous among the relevant public, TIPO concludes that it is likely that the registration of “RENTBERRY” would cause confusion with Blackberry’s “BLACKBERRY” and “BERRY”. Therefore, the contested trademark “RENTBERRY” is canceled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4czIyOU1rZ0wreGFQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Dior prevailed in opposition proceeding for its “CD” trademark

On February 3, 2020, Parfums Christian Dior S.A. (“Dior”) filed opposition against a  trademark registered by a third party, alleging that registration of the contested trademark would cause confusion with Dior’s well-known “CD” trademark (e.g., Reg. No. 01719065, see below).

The contested trademark, which also features a stylized “CD” (Reg. No. 02018695, see below), was filed on March 27, 2019, and granted on November 1, 2019. The contested trademark is designated for use in goods under class 3, including cosmetics, perfumes, hair conditioner, incense, skin care, animal cleaning agent, cosmetics for animal, air fragrance, etc. 

Taiwan’s IP Office (“TIPO”) sided with Dior on April 29, 2021, finding the contested trademark shall be cancelled based on Article 30.1.11 of Trademark Law:

 

1.     Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such mark is identical to or similar with another person’s well-known trademark, and hence there exists a likelihood of confusion on the relevant public.

2.     With regard to the status of Dior’s “CD” trademark, TIPO confirms that before the filing date of the contested trademark, i.e., March 27, 2019, Dior’s cited trademark has become famous in products like cosmetics and perfume. TIPO’s finding is based on Dior’s worldwide registration records of its “CD” trademark, evidence showing Dior’s continuous use of “CD” trademark since 1952, and all the other records of marketing and media exposure in Taiwan starting from 2014.

3.     The contested trademark features two stylized letters “C” and “D”, which are the same letters presented in Dior’s aforesaid famous trademark. Since the contested trademark is verbally and visually similar with Dior’s well-known “CD” trademark, TIPO opines the two trademarks are highly similar with each other, and the mere difference in font style is not enough for ordinary consumers to distinguish the contested trademark from Dior’s famous “CD” trademark.  

4.     As to the distinctiveness of Dior’s famous trademark, TIPO finds Dior’s trademark highly distinctive because “CD” has no bearing with the nature or function of the products that the trademark is designated for use. TIPO agrees that “CD” as a trademark, when being used in cosmetics like lipstick and pressed powder, demonstrates high distinctiveness among the relevant consumers.

5.     Further, TIPO notes that Dior submitted relevant evidence showing its “CD” trademark has extended into beauty industry. For example, TIPO finds that in addition to cosmetics and perfume, Dior’s “CD” trademark has been put in use on other products like candles and cosmetic case. Moreover, TIPO’s aforesaid finding is further strengthened by the evidence showing that in the famous Taipei 101 Tower, Dior provides beauty and skin care service through its physical store. Therefore, TIPO believes that Dior’s cited “CD” trademark has been put in diversified use.   

 

In view of the above, since the contested trademark is highly similar with Dior’s famous and distinctive “CD” trademark, is applied for use in cosmetic products that serve similar or associated purpose, and Dior has put its “CD” trademark in diversified use, TIPO agrees that there is likelihood that the registration of the contested trademark would cause confusion on the relevant consumers. As such, TIPO rules that the contested trademark should be cancelled.   

 

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dzJMNTlTTFdmWUNHSnQ5R2lWM0ladz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Online streaming giant HULU successful in cancelling “hulu hulu ク一ル ク一ル”, a trademark that is not applied for use in streaming service

On November 15, 2019, the leading streaming service provider, HULU LLC, filed trademark opposition in Taiwan’s IP Office (“TIPO”), alleging the registration of “hulu hulu ク一ル ク一ル” would cause confusion with its famous trademarks “HULU” and “hulu” (Reg. 01357122, 01514558, 01930932, and 01953391, see below).

 

The contested trademark, “hulu hulu ク一ル ク一ル”, was filed on January 7, 2019, by YA OU MEI International Trading Co. (“YOM”). The trademark was granted on August 16, 2019 (Reg. No. 02006595, see below), designated for use in: 1) goods under class 3, such as air fragrance, deodorant, toothpaste, tooth powder, breath fresheners, mouthwashes, toothbrushes, etc.; and 2) services under class 35, including agent for distribution of domestic and foreign products, agent for import and export, department store, purchasing service, convenience store, supermarket, TV shopping, online shopping, and retail and wholesale for beauty appliances.

HULU LLC argued that the contested trademark violated, among the others, Article 30.1.11 of Trademark Law. TIPO agreed and sided with HULU LLC on May 3, 2021:

1.      Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such a mark is similar with other’s famous trademark, and hence there exists likelihood of confusion among the relevant public.

2.      Based on the records submitted by HULU LLC, including the active global trademark registration for “HULU” and “hulu” across areas including EU, Unites States, Australia, Japan, Singapore, and China; and the continuous media exposure in the local market since its inception in 2007, TIPO confirmed that the cited “HULU” and “hulu” trademarks have become well-known for internet video streaming platform and the relevant services.

3.      As for similarity, the contested trademark “hulu hulu ク一ル ク一ル” and the cited trademarks “HULU” and “hulu” both feature the word mark “hulu”, with the difference in that there is Japanese “ク一ル” presented in YOM’s contested trademark. However, such difference, from TIPO’s viewpoint, is insufficient, because the font size of the Japanese “ク一ル” is quite small. Ordinary consumers would still view “hulu” as the main distinctive portion of the contested trademark. Thus, TIPO finds “HULU” and “hulu hulu ク一ル ク一ル” similar with each other.

4.      TIPO further notes that “HULU” is very distinctive. According to its records, except for HULU LLC’s “HULU” and YOM’s “hulu hulu ク一ル ク一ル”, there is only one other “HULU” trademark registered by a third party (Reg. No. 01386252) for use in food products. Thus, “HULU” is unique, and consumers are inclined to use it to identify the source of provided goods and services.

5.      Although YOM’s contested trademark is not designated for use in video streaming service, TIPO finds that HULU LLC’s “HULU” and “hulu” trademarks have been applied for use in diversified products and services, such as marketing consultation, education, entertainment, backpacks, key bags, etc. Thus, TIPO considers there is likelihood that in addition to video streaming service, HULU LLC’s “HULU” and “hulu” will be put in use on other types of products or services.

 

In view of the above, given that “HULU” and “hulu” are highly distinctive and have become well-known, that YOM’s “hulu hulu ク一ル ク一ル” is similar with HULU LLC’s well-known trademarks, and that it is likely that HULU LLC’s cited trademarks may be used in diversified kinds of products, TIPO determines that YOM’s “hulu hulu ク一ル ク一ル” may cause the relevant public to misconceive that YOM’s product is associated with HULU LLC’s product or service. As a result, TIPO rules that YOM’s contested trademark shall be cancelled.

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bm45R25kamxvVDhQa3lsaTJEcDZ6QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true