Chapter 4 Corp. (“Chapter 4”), the registrant of the famous “Supreme” trademark in Taiwan (See below), successfully prevented APIYOO Holding Co. Ltd. (“APIYOO”) from acquiring registration for its “Sup” trademark.
APIYOO’s application was filed on October 18, 2019 (See below), designated for use in goods under class 8, including electric razor, razor blade, nail trimming tools, iron, curler, etc. When APIYOO’s application was still pending, Chapter 4 submitted a third-party opinion letter to Taiwan’s IP Office (“TIPO”), contending that APIYOO’s application for “Sup” shall be rejected in view of likelihood of confusion with Chapter 4’s cited “Supreme” trademarks (Reg. No. 01292538, 01466427, 01511833, 01560560, 01592983, 01768673, and 01813902).
On August 23, 2021, TIPO found in Chapter 4’s favor, rejecting APIYOO’s application based on 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 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.
2. With respect to determination
of similarity between “Sup” and “Supreme”, TIPO determined that “Sup” is composed
of “s”, “u”, and “p”, which are identical with the first three letters of “Supreme”.
Thus, TIPO opines that ordinary consumers may find “Sup” associated with “Supreme”,
because “Sup” and “Supreme” are verbally and visually similar with each other.
3.
With respect to the status of “Supreme”,
TIPO was convinced by the records submitted by Chapter 4, which showed that
since 1994, “Supreme” as a trademark has been registered and put in use by
Chapter 4 throughout the world, including in China, EU, Japan, U.S., UK, and
Taiwan. TIPO also affirmed that In the product field of apparel, shoe, and
gloves, “Supreme” has attained the status of well-known trademark.
4. Besides, TIPO also noted that since
2016, Chapter 4 has started using “Sup” in conjunction with its famous “Supreme”
trademark, and that application for “Sup” has been filed in Norway, U.S. and Japan.
Thus, based on the records of continuous trademark use and successful product
sale in Taiwan, TIPO was of the view that consumers in Taiwan shall be more
familiar with Chapter 4’s “Supreme”. Upon seeing “Sup”, consumers would be more
inclined to think of Chapter 4’s “Supreme”, rather than APIYOO’s “Sup”.
5. Lastly, TIPO noted that “Supreme”
is highly distinctive after Chapter 4’s continuous use and marketing, and that
it has been put in use on various kinds of products, including co-branded
products like suitcase, shoes, case for mobile phone, purse, and diving glasses
in collaboration with brands such as RIMOWA, GUCCI, CHANEL, NIKE, and LV. Hence,
TIPO was convinced that “Supreme” is used and well recognized in various types
of products aside from clothing, shoes, and glove.
In view of the above, since “Supreme” is well-known
and found similar with “Sup”, consumers are more familiar with “Supreme”, and “Supreme”
has been used in various kinds of products, TIPO determines that registration
of “Sup” may cause consumers to misconceive that the products supplied by APIYOO
are associated with or related to products supplied by Chapter 4. As a result,
APIYOO’s “Sup” trademark application was rejected by TIPO accordingly.
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