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
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