Taylor Guitars prevailed over MainPeakMusic Co. Ltd. in opposition proceeding over “baby” trademark

TAYLOR-LISTUG INC. (“Taylor”), the registrant of trademarks “BIG BABY” (No. 01076788) and “BABY TAYLOR” (No. 01076787), filed opposition against MainPeakMusic Co. Ltd. (“MPMC”) on January 14, 2020, alleging that MPMC’s registered “baby” word mark should be cancelled due to violation of Trademark Act.

 

MPMC’s “baby” trademark (No. 02016426, see below) was granted on October 16, 2019, designated for use in goods under class 15, including musical instruments such as keyboard instrument, electronic musical instrument, violins, guitars, electric guitars, ukuleles, guitar strings, recorder, tuner for musical instrument, music stand, and musical box.

 

Taiwan’s IP Office (“TIPO”) sided with Taylor, finding MPMC’s “baby” trademark violates Article 30.1.10 of Trademark Act:

1.     Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such a mark is 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.

2.     In this case, Taylor’s trademarks, i.e., “BABY TAYLOR” and “BIG BABY”, and MPMC’s trademark, i.e., “baby”, all feature the same word “baby”, with minor difference in style and font size. While Taylor’s trademarks contain additional words “BIG” and “TAYLOR”, these words, from the viewpoint of ordinary consumers, would not make Taylor’s trademarks different from MPMC’s “baby” trademark. Rather, MPMC’s “baby” trademark may be considered as one of Taylor’s “BABY” trademark series. Thus, MPMC’s trademark is conceptually, verbally, and visually similar with Taylor’s trademarks.

3.     TIPO further notes that Taylor’s trademarks were also applied for use in similar musical instrument, like guitar. Thus, the goods designated by MPMC’s “baby” trademark are highly similar with that designated by Taylor’s trademarks.

4.     Moreover, since “BABY TAYLOR” and “BIG BABY” neither describe nor are related to the nature or function of the designated musical instrument, TIPO holds that they should be highly distinctive. In other words, consumers are inclined to use them to identify the source of the supplied goods or services.

5.     Turning to the reputation of trademark, TIPO finds this factor again tilts to the favor of Taylor. Since its inception in 1974, Taylor has been well-known for its high quality acoustic guitar. In 1996, Taylor further introduced the “Baby” series, touting that the “Baby” guitar series is the “ultimate travel companion”. After years of marketing and selling, Taylor’s “BABY TAYLOR” and “BIG BABY” have gained considerable reputation within the relevant consumers. To the contrary, there is no evidence of trademark use submitted by MPMC to back its use of “baby” trademark. Thus, TIPO is convinced that consumers are more familiar with Taylor’s “BABY TAYLOR” and “BIG BABY” trademarks.

 

Given that MPMC’s “baby” is highly similar with Taylor’s “BABY TAYLOR” and “BIG BABY”, is applied for use in similar musical instruments, and consumers are more familiar with Taylor’s trademarks, TIPO determines that MPMC’s “baby” is confusingly similar with Taylor’s “BABY TAYLOR” and “BIG BABY”, and thus should be cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dUVFbU0zZlpEcURLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Amazon’s Alexa prevailed in trademark opposition, cancelling another trademark that features similar icon of dialogue bubble adopted by Amazon’s popular app

 On August 31, 2021, Taiwan’s IP Office (“TIPO”) determined that the registration of trademark held by WanPay Digital Marketing Co., Ltd. (“WanPay”) should be cancelled, for WanPay’s trademark might cause confusion with the registered icon held by Amazon Technologies Inc. (“Amazon”) for its popular Alexa App (Reg. No. 01885349, see below).

WanPay’s trademark (Reg. No. 02035098, see below), was filed on July 19, 2019, and granted on January 16, 2020, designated for use in goods under class 9, including computer hardware, network server, mobile phone application, personal computer, internet equipment, computer game software, tablet computer, computer software, computer terminals, etc. Amazon filed opposition against WanPay’s trademark on April 16, 2020, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO found for Amazon, determining that WanPay’s trademark should be cancelled in accordance with Article 30.1.10 of Trademark Act, which provides that a mark shall not be registered if such a mark is “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”.

 

1.      TIPO first recognizes that Amazon’s trademark is highly distinctive and unique, which would create strong impression among the relevant consumers. Because of such high distinctiveness and originality, ordinary consumers are more inclined to use it to identify the source of the supplied goods or services, and are more likely to be confused even though there is only minor degree of similarity.

2.      As to similarity, WanPay argues that the two trademarks should be dissimilar because Amazon’s trademark features a blue circular bubble without any further design, while WanPay’s trademark features two check marks right in the middle, which should be sufficient to distinguish its contested trademark from Amazon’s. Amazon argues that both trademarks present the image of a dialogue bubble, so they should be found visually and conceptually similar with each other. TIPO sides with Amazon, finding the two trademarks are similar despite the presence of two check marks in WanPay’s trademark, for the shape and contour of its trademark is almost the same as that of Amazon’s blue dialogue bubble, especially the protruding corner shown in the circular bubble.

3.      WanPay contends that the nature of goods designated by its trademark is dissimilar with those designated by Amazon’s. TIPO disagrees. Amazon’s cited trademark is designated for use in voice recognition software, voice control application, software for home device, computer software for personal data management, etc. The functions and purposes of these products, TIPO finds, are relevant and associated with those designated by WanPay’s opposed trademark. While WanPay argues that its business model (e-payment, virtual currency, etc.) is different from Amazon’s (voice recognition, digital personal assistant, etc.), TIPO finds such difference is less relevant in determining the similarity of the products designated by the trademarks.  

4.      Turning to the recognizability of trademark, TIPO again finds this factor tilts to Amazon’s favor, for Amazon’s trademark, through its continuous use in providing the highly successful service and product of Amazon Alexa, has been well recognized by the local consumers. To the contrary, the evidence of use submitted by WanPay is relatively thin. Hence, TIPO is of the view that Amazon’s trademark should be given more weight when evaluating the likelihood of confusion among the relevant public.

5.      Given the two trademarks are similar with each other, designated for use in relevant and associated products, Amazon’s trademark is highly distinctive and should be given more favorable light in view of its profound recognizability among the relevant customers, TIPO determines there might be confusion caused by WanPay’s trademark. Thus, WanPay’s trademark is found violating Article 30.1.10 of Trademark Act.     

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cmk1K3hTblczNUhidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled a registered trademark featuring a bird for likelihood of confusion with the bird icon adopted by Unilever’s popular brand “DOVE”

 On February 13, 2020, Unilever IP Holdings B.V. (“Unilever”), the registrant of trademarks for the popular personal care brand “DOVE” (Reg. No. 01028508, 01021583, see below), filed trademark opposition against Van Xuan FMCG Investment Company Limited (“Van Xuan”), alleging that Van Xuan’s registered trademark would cause confusion with Unilever’s iconic trademarks. 

Van Xuan’s trademark (Reg. No. 02021779, see below), was filed on March 18, 2019, and granted on November 16, 2019, designated for use in goods under class 3, including cosmetics, nail polish, fragrance, whitening cream, etc. 

Taiwan’s IP Office (“TIPO”) found for Unilever on August 10, 2021, determining that the registration of Van Xuan’s 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 a mark is “identical with or similar to another person’s registered trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected, and hence there exists a likelihood of confusion on the relevant consumers.”

2.     TIPO first finds the opposed trademark features a silhouette drawing of bird, which is similar to Unilever’s registered bird logo for its “DOVE” brand. While Van Xuan’s trademark provides more detailed description on the wings and claws of the bird, TIPO is of the view that such differences are minor, and could not help consumers with ordinary degree of care to distinguish Van Xuan’s trademark from Unilever’s. Therefore, Van Xuan’s trademark is found visually and conceptually similar with Unilever’s trademarks. The degree of similarity is high. 

3.     As to the designated use of goods, TIPO notes that Unilever’s trademarks are applied for use in goods like bath essence, shower gel, agents for shaving, body deodorant, hand soap, skin care, etc. These products, like those designated by Van Xuan’s opposed trademark, serve similar function for personal hygiene and personal care, and are usually sold through similar retail channels. As such, TIPO finds Van Xuan’s opposed trademark is applied for goods that are similar to those designated by Unilever’s trademarks. 

4.     TIPO further reasons that given Unilever’s trademarks are very distinctive, and have been put in use on various “DOVE” products like shower gel, shampoo, facial cleanser, etc., for a very long time, the relevant consumers are more familiar with Unilever’s iconic logos.

5.     In view of the above, considering the similarity between Van Xuan’s and Unilever’s trademarks, the similarity between the goods designated by Van Xuan’s trademark and those by Unilever’s “DOVE” logo, and the fact that local consumers are more familiar with Unilever’s iconic trademarks, TIPO posits that the registration of Van Xuan’s trademark may cause confusion among the relevant consumers. Therefore, Van Xuan’s registered trademark shall be cancelled accordingly.

 

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Q2hsRzgxd3BqS3RBeU9XM2QwVmwwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German fashion brand “BOSS” prevailed over “DOSS” in trademark opposition proceeding

On April 16, 2020, HUGO BOSS TRADE MARK MANAGEMENT GMBH & Co. KG (“HBTM”) filed trademark opposition against trademark “DOSS”, alleging the registration of “DOSS” would cause confusion with its famous “BOSS” trademarks (Reg. No. 419774, 1063553, 1552959, and 412330, see below).

The contested trademark, “DOSS” (Reg. No. 02037593, see below), was filed on July 19, 2019, and granted on January 16, 2020. “DOSS” was applied for use in goods under class 9, 14, 18, and 25. For goods under class 14, “DOSS” was designated for use in products like bracelet, jewelry box, watches, electronic watches, and clocks; for goods under class 18, “DOSS” was designated for use in bags, wallet, handbags, sports bags, suitcases, and backpacks; for goods under class 25, “DOSS” was designated for use in scarfs, headscarf, tie, hat, and belt.

 

HBTM contended that the registration of “DOSS” for goods under class 14, 28, and 25 at least violated Article 30.1.10 of Trademark Law, which prescribes that “a mark shall not be registered if such a mark is identical to or similar with other’s senior trademark and applied for use in identical or similar products or services, hence there exists likelihood of confusion among the relevant public.”

 

Taiwan’s IP Office (“TIPO”) sided with HBTM on July 29, 2021:

1.    Registrant of “DOSS” argues that there is significant difference because the first letter of “DOSS” is “D”, which is different from that of “BOSS”. Besides, the second letter “O” presented in “DOSS” is particularly stylized. However, TIPO finds these are minor differences, and opines that in its entirety “DOSS” still demonstrates similar visual impression with “BOSS”. Further, the pronunciation of “DOSS” and “BOSS” is also similar. TIPO therefore considers “DOSS” possess medium degree of similarity with “BOSS”.

2.    With regard to the designated products, TIPO notes that the asserted “BOSS” trademarks are also applied for use in similar or associated products, such as ring, tie, necklace, jewelry box, handbags, wallets, suitcase, belt, tie, belt, briefcase, etc. Thus, TIPO finds “BOSS” and “DOSS” both are applied for use in similar products, and the degree of similarity is high.

3.    Moreover, TIPO affirms that based on the submitted marketing materials, court decisions, and sales records, prior to the filing date of “DOSS”, HBTM’s “BOSS” trademarks have already become well-known in Taiwan, with greater familiarity and recognizability among the relevant consumers. To the contrary, the evidence of use of the “DOSS” trademark is limited to products such as Bluetooth earbuds, which is not the product class 14, 18, or 25. Thus, TIPO concludes that consumers should be more familiar with “BOSS” in the product field of class 14, 18, and 25.

4.    In view of the above, since “DOSS” is visually and verbally similar with “BOSS”, applied for use in similar goods under class 14, 18, and 25, and consumers are more familiar with “BOSS” due to HBTM’s continuous marketing and use in the local market, TIPO determines that “DOSS” is confusingly similar with “BOSS” per Article 30.1.10 of Trademark Law. Therefore, TIPO rules that the registration of “DOSS” should be cancelled accordingly.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SkErTXZBdzl3alF6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true