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.
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