“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.
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.
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