Taiwan’s IP Office cancelled “AODI” in view of likelihood of confusion with German Auto Giant’s famous trademark “AUDI”

On January 14, 2020, German automaker AUDI AG filed opposition against “AODI”, contending that registration of “AODI” would cause confusion with its famous trademarks “AUDI” (Reg. No. 01768501, see below).

The contested trademark “AODI” (Reg. No. 02017550, see below), was filed on April 11, 2019, and was granted on October 16, 2019, designated for use in services under class 35, including retail and wholesale service for electrical appliances, hardwares, telecommunication equipments; intermediary service for the sale of second-hand products; agency for export and import; and distribution of various products of foreign manufacturers. 

 AUDI AG alleged that the registration of “AODI” violates, among the others, Article 30.1.11 of Trademark Act, which provides that a trademark shall not be registered if such a mark is similar with other’s well-known trademark, and hence there exists likelihood of confusion among the relevant public. Taiwan’s IP Office (“TIPO”) agreed, and made its determination on June 28, 2021:

 

1.     TIPO affirmed that AUDI AG’s “AUDI” is a well-known trademark in the field of automobile and its relevant services. “AUDI” as a trademark was filed for registration in 2015, and has been used in developing the relevant products and services in Taiwan since then, including the maintenance service and exhibiting centers. The brand “AUDI” was also ranked NO. 44 in Interbrand’s 100 Best Global Brand in 2015. Currently, there are more than 10 exhibiting centers that provide the sale and distribution service for “AUDI”. Thus, when the contested trademark “AODI” was filed on April 11, 2019, “AUDI” as a trademark is already well-known among the relevant public.

2.     As to similarity, although the contested trademark “AODI” presents an additional earth icon underneath, TIPO found such icon insufficient to distinguish “AODI” from the famous “AUDI” trademark, because the earth icon is not distinctive and is less likely to form a strong impression in the consumer’s mind. The word mark “AODI” should still be the main portion of the contested trademark. Since “AODI” and “AUDI” share the same letters “A”, “D”, and “I”, with only minor difference in their second letters, TIPO found “AODI” and “AUDI” visually and verbally similar with each other.

3.     In comparison to the marketing materials submitted by AUDI AG, TIPO noted the evidence submitted to support the use of “AODI” trademark was quite thin. Moreover, There is evidence showing that AUDI AG has expanded the brand territory of “AUDI” to products such as clothing, toys, apparels, glasses, bags, watches, timer, and camera; and to services such as transportation, maintenance, and education. Therefore, TIPO determined that local customers should be more familiar with “AUDI”.

4.     TIPO further noted that since there are lots of electronic devices installed and used in an automobile, and it is common for car companies to run their own used cars business, the services that “AODI” is applied for use, like intermediary service for the sale of second-hand product, are relevant and associated with the products and services represented by “AUDI”.  

 

In view of the above, given that “AUDI” is more famous and recognizable among the relevant public, that there is considerable similarity between “AODI“ and “AUDI”, and that “AODI” is applied for use in services that are associated with products and services designated by “AUDI”, TIPO determines that “AODI” is confusingly similar with AUDI AG’s well-known “AUDI”. 

 

Based on the aforesaid reasons, registration of “AODI” is cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4REVHNFJsK3J5YXNXUFRCNXVXcXBTdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Court ruled that LINUX’s “OPENCHAIN” is not confusingly similar with 7-11’s “OPEN-Chan”

“OPENCHAIN”, the registered trademark held by The LINUX FOUNDATION (“LINUX”) in Taiwan (Reg. No. 01960000, see below), was contested on March 15, 2019 by President Chain Store Corporation (“PCSC”), the retail giant that operates popular convenience stores. PCSC alleged that the registration of LINUX’s “OPENCHAIN” would cause confusion with PCSC’s registered trademark “OPEN-Chan”.

 

According to PCSC, the asserted trademarks, “OPEN-Chan” (Reg. No. 01616135 and 01611368, see below), are the nickname of PCSC’s popular cartoon figure, OPEN ちやん, which has become very famous among the relevant consumers due to its continuous use on the relevant services. PCSC’s trademarks are designated for use in goods under class 9 (telephone, IC Card, internet equipment, communication devices, etc.) and services under class 41 (publications of various kinds of papers, professional training, educational information, etc.)

 

The contested trademark, “OPENCHAIN”, was filed on March 30, 2016, and granted on December 16, 2018, designated for use in goods under class 9 (including: downloadable electronic publications of teaching materials, brochures, proposals, technical standards, white papers or manuals for software programs that promote license and policy compliance, etc.), and services under class 35 (management service for the license of other’s products or services), 41 (educational training services), and 45 (license and legal service for software development business). 

 

Taiwan’s IP Office (TIPO) found in LINUX’s favor on May 28, 2020, determining that although “OPENCHAIN” is similar with “OPEN-Chan”, and part of the services designated by “OPENCHAIN” under class 41 are similar with those by “OPEN-Chan”, the relevant public should be able to distinguish “OPENCHAIN” from “OPEN-Chan”. The reasons are that both “OPENCHAIN” and “OPEN-Chan” are distinctive, they are designated for use in different kind of goods, and there are sufficient records showing “OPENCHAIN” has been put in profound use by LINUX since 2015 after its inception in LinuxCon Europe, and thus is well-recognized by the relevant consumers. 

 

PCSC, after failing to vacate TIPO’s determination in the Appeal Board of Ministry of Economic Affairs, filed administrative lawsuit with the IP Court, requesting TIPO’s aforesaid  determination be vacated. 

 

PCSC argued that the registration of “OPENCHAIN” violates Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law. The IP Court, nonetheless, sided with LINUX in its decision rendered on May 27, 2021:

1.     As to Article 30.1.10, firstly, the IP Court found there is only medium degree of similarity between “OPENCHAIN” and “OPEN-Chan”. While the two trademarks are visually and verbally similar with each other, LINUX’s “OPENCHAIN” implies the meaning of “open source software supply chain”, while PCSC’s “Open-Chan” refers to the name of its cartoon figure OPENちやん. As a result, the two trademarks are conceptually dissimilar. 

2.     As to similarity of the designated goods, PCSC argued that “OPENCHAIN” is applied for use in downloadable publications, which is also based on the operation of internet equipment. Since “OPEN-Chan” is applied for use in internet equipment, the downloadable publications designated by “OPENCHAIN” should be found associated with internet equipment as designated by PCSC’s “OPEN-Chan”. However, the IP Court disagreed, and found PCSC’s argument too broad. It is because there are so many services and goods made available via the internet nowadays, and allowing PCSC’s argument would inappropriately expand the scope of similarity when it comes to internet equipment. The IP Court thus determines that the goods designated by “OPEN-Chan” are not similar with those designated by LINUX’s “OPENCHAIN” in terms of their nature, function, and purpose.

3.     The IP Court affirmed TIPO’s finding that both trademarks are distinctive. As to the use of trademarks, the IP Court also agreed with TIPO that PCSC’s use of “OPEN-Chan” is not as strong as it claimed. Most of the evidence submitted by PCSC emphasizes its cartoon figure OPENちやん, and there is little evidence showing the use of trademark “OPEN-Chan”. Thus, the evidence is insufficient to show PCSC’s “OPEN-Chan” is well-known.

4.     Furthermore, the IP Court noted that the customer base of LINUX’s “OPENCHAIN” is substantially different from that of PCSC’s “OPEN-Chan”, because the former pertains to industrial standard and its products or service are usually accessed by software professionals, while the latter pertains to retail service and products for consumers. Thus, the registration of “OPENCHAIN” is unlikely to cause confusion with “OPEN-Chan” among the relevant public. As a result, the IP Court found no violation of Article 30.1.10 of Trademark Law.

5.     Since there is no evidence showing PCSC’s “OPEN-Chan” is a well-known trademark, and the designated goods of “OPENCHAIN” are different from those of “OPEN-Chan”, the IP Court further found there is no violation of Article 30.1.11 and 30.1.12 of Trademark Law. 

 

In view of the above, the IP Court affirmed TIPO’s determination, and rejected PCSC’s claims.     

 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c128%2c20210527%2c2

 

Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law:

A trademark shall not be registered in any of the following: 

………

(10) being identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper. 

(11) being identical with or similar to another person’s well-known trademark or mark, and 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, unless the proprietor of the said well-known trademark or mark consents to the application.

(12) being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where 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, unless the proprietor of the said earlier used trademark consents to the application.

See: https://law.moj.gov.tw/ENG/LawClass/LawAll.aspx?pcode=J0070001

Amazon’s “ECHO” beat “ECGO” again in trademark opposition proceeding

AMAZON TECHNOLOGIES, INC. (“Amazon”), the trademark registrant of “ECHO” (Reg. No. 01966088, see below) in Taiwan, filed opposition on May 30, 2019, alleging the registration of trademark “ECGO” would violate Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

The contested trademark, “ECGO” (Reg. No. 01974458, see below), was filed on July 30, 2018, and granted on March 1, 2019, designated for use in services under class 37, including instrument installation and repair, car maintenance and repair, vehicle repair station, vehicle lubrication, vehicle battery charging, tire refurbishment, etc.

Taiwan’s IP Office (“TIPO”) ruled in favor of Amazon on May 17, 2021, determining that the contested trademark violated at least Article 30.1.11 of Trademark Act:

1.    Article 30.1.11 of Trademark Act 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.

2.    TIPO finds Amazon’s ECHO represents the brand of Amazon’s popular smart speaker powered by “Alexa”, the AI-driven voice assistant. Since 2014, Amazon has successfully registered series of trademarks, including “ECHO”, “AMAZON ECHO”, “ECHO DOT”, “AMAZON ECHO DOT”, in numerous jurisdictions such as the U.S., Australia, EU, Japan, Hong Kong, UK, Singapore, South Korea, and Taiwan. Through Amazon’s continuous marketing and promotion, “ECHO” has gained the status of well-known trademark in Taiwan prior to July 30, 2018, the filing date of the contested trademark.

3.    The contested trademark “ECGO” and Amazon’s “ECHO” are visually and verbally similar with each other, because both consist the letters “E”, ”C”, and ”O”, with the minor difference in their third letters, i.e., “G” vs “O”. Thus, TIPO opines that there is medium degree of similarity.

4.    Turning to the strength of trademark, TIPO finds Amazon’s “ECHO” is distinctive, and, based on the evidentiary materials submitted by Amazon, recognizes that “ECHO” has become a well-known trademark in Taiwan. Thus, Taiwan’s consumer is more familiar with Amazon’s “ECHO”.

5.     Further, TIPO notes that there are sufficient records showing Amazon’s “Alexa” has been applied to the field of automobile (e.g., Ford and BMW). For example, by calling “Alexa” and activating the system “Amazon Echo” or “Echo dot” installed in a car, the driver could easily access various kinds of information regarding the vehicle, including the fuel condition, tire pressure, mileage, and the power of battery. Accordingly, since the services designated by the contested trademark pertain to car maintenance and repair, vehicle repair station, vehicle lubrication, and vehicle battery charging, TIPO posits that consumers may find these services associated with those provided by Amazon’s “ECHO”.

 

Based on the aforesaid reasons, TIPO is convinced that the registration of “ECGO” would cause confusion with Amazon’s well-known “ECHO”, and determines that the contested trademark shall be cancelled per Article 30.1.11 of Trademark Act.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UlErRHljTEVxU2J4TWNIODg4Uk1Wdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true