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.
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