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