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.
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:
沒有留言:
張貼留言