Taiwan’s IP Office found Lion Beer’s “MAC’S” similar with McDonald’s “BIG MAC”

On October 20, 2021, Taiwan’s IP Office (“TIPO”) determined that “MAC’S”, the trademark registered by Lion-Beer, Spirits & Wine (Nz) Limited (“Lion Beer”), should be cancelled due to likelihood of confusion with McDonald’s “BIG MAC” (See below).

The contested trademark, “MAC’S”, was filed on October 5, 2018, and granted on October 1, 2019 (Reg. No. 02014986, see blow), designated for use in services under class 43, including beverage shop, restaurants, coffee shop, cafeterias, catering service, hotels, accommodation services, etc.

 

McDonald filed opposition on January 2, 2020, contending Lion-Beer’s “MAC’S” would cause confusion with McDonald’s “BIG MAC”.

In its determination, TIPO sides with McDonald, finding that:

1.      With regard to similarity, TIPO opines both trademarks feature the word “MAC”, which would be the main portion that creates the strongest impression among ordinary consumers. While there is additional word “BIG” in McDonald’s cited trademarks, such word is adjective and would not be the focus of consumers. Thus, TIPO considers “MAC’S” similar with “BIG MAC”.

2.      As to the similarity of the designated goods and services, TIPO finds McDonald’s “BIG MAC” is also applied for use in restaurant service, and the food products designated by McDonald’s “Big Mac”, such as fried chicken, fried nuggets, seasoning sauce, cookies, French fries, etc., are also associated with or relevant to the accommodation or catering services designated by Lion Beer’s “MAC’S”. Thus, TIPO rules that “MAC’S” is applied for use in services that is associated with products and service designated by McDonald’s “BIG MAC”.

3.      TIPO further notes that McDonald’s “BIG MAC” is distinctive, and has accumulated considerable recognizability through years of marketing and promotion in the local market, including the menu, TV commercial, and associated merchandise such as hand bag, clothing, and watches. Although TIPO also notes that there is evidence showing Lion-Beer’s marketing and sale of beer products in retail channels like Carrefour, such evidence is not enough to prove that on the filing date of Lion-Beer’s “MAC’S”, local consumers have already been familiar with “MAC’s”. Thus, TIPO is of the view that consumers are more familiar with McDonald’s “BIG MAC”.

      In view of the above, considering Lion-Beer’s “MAC’S” is similar with McDonald’s “BIG MAC”, is applied for use in similar services, and consumers are more familiar with “BIG MAC”, TIPO determines that there is likelihood of confusion caused by registration of “MAC’S”, and rules that such a trademark shall be cancelled accordingly.  

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4b1hqRkxUQ1pYbVVGbnJsSUdvRk4yUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Taiwan’s IP Office found trademark designated for use in cleaning product for pet might cause confusion with trademark designated for use in personal hygiene product

 HAIR O'RIGHT INTERNATIONAL CORPORATION (“HOI”), a popular hair care brand in Taiwan, filed trademark opposition against KD FLASH CO., LTD. (“KD FLASH”) on June 30, 2020, contending the trademark registered by KD FLASH would cause confusion with HOI’s well-known ”O’right” trademarks (Reg. No. 01253931, 01790502, 01792778, 01793624, 01600087, and 01736407, see below)

 

KD FLASH’s contested trademark, “AllrightDog” was filed on August 14, 2019, and granted on April 1, 2020 (Reg. No. 02049347, see below), designated for use in goods under class 3, including animal cosmetics, animal hair scouring agent, pet bath lotion, drug-free pet hair scouring agent, pet deodorant, drug-free animal hair scouring agent, air fragrance, canned for cleaning and dust removal Pressurized air, and non-medical oral cleaner.

 On October 29, 2021, Taiwan’s IP Office (“TIPO”) sided with HOI, finding KD FLASH’s contested trademark would cause confusion with HOI’s “O’right” trademarks:

 

1.      TIPO first finds that HOI has submitted sufficient records, including sales records, marketing materials, worldwide trademark registrations of O’right, exhibition documents, and the exposure on mainstream social media such as Facebook, Instagram, and YouTube, for proving the well-known status of HOI’s asserted trademarks “O’right” trademarks. TIPO is convinced that before the filing date of KD FLASH’s contested trademark, “O’right” has become famous and achieved great popularity among the relevant consumers.

 

2.      As to similarity, both HOI’s “O’right” and KD FLASH’s “AllrightDog” contain the word “right”, and the pronunciation of “O’right” and “All Right” is similar. Thus, TIPO is of the view that KD FLASH’s “AllrightDog” is verbally and visually similar with HOI’s “O’right”

 

3.      TIPO notes that KD FLASH’s “AllrightDog” is applied for use in cleaning products for pet, and HOI’s “O’right” is designated for use in hair care products for human. While these two products seem to be different, TIPO posits that nowadays more and more pet owners consider their pets as their own children, and that for those pet owners, the line that distinguishes product for human from product for pet is not always clear-cut. Added to that, “O’right” is already a famous trademark, so it would be reasonable for consumers to expect that the territory of HOI’s “O’right” trademark would reach products for pet use. Therefore, TIPO considers the products designated by KD FLASH’s “AllrightDog” is similar with those designated by HOI’s “O’right”.

 

4.      TIPO further determines that HOI’s “O’right” trademarks are distinctive when applying for use in cleaning and cosmetic products for human, and that KD FLASH has not submitted enough evidence to convince TIPO that its “AllrightDog” trademark is also famous and could be distinguished from HOI’s “O’right” among the relevant consumers. Therefore, TIPO sees HOI’s “O’right” trademarks in a more favorable light because they are distinctive, and consumers are more familiar with them.

 

In view of the above, since “O’right” is well-known, consumers are more familiar with “O’right”, KD FLASH’s “AllrightDog” is similar with “O’right”, and KD FLASH’s “AllrightDog” is applied for use in similar products, TIPO determines that KD FLASH’s “AllrightDog” should be cancelled because such trademark may cause confusion with HOI’s famous “O’right” trademarks.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SzlHUjFNeGtNYlMzaWoyM2dEeDRGUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“AVEDA” rolled over “AROMAVEDA” in trademark opposition proceeding

On September 29, 2021, Taiwan’s IP Office (“TIPO”) cancelled “AROMAVEDA” after finding such trademark confusingly similar with “AVEDA”, the famous marks registered by AVEDA Corporation (Reg. No. 00146525, 00540871, 00536080, 00533060, and 01221016, see below).

 

The contested trademark, “AROMAVEDA” (Reg. No. 02000548, see below), was filed on January 19, 2019, and granted on August 1, 2019, designated for use in goods under class 3, including cosmetics, hair dyes, shampoos, conditioners, polishes, fragrances, essential oil, tea bath bag, perfume powder, animal hair cleansers, air fragrance, etc. AVEDA Corporation filed opposition on October 31, 2019, contending that “AROMAVEDA” violates Article 30.1.11 of Trademark Law.

 

TIPO sided with AVEDA Corporation:

1.    Article 30.1.11 of Trademark Act provides that a mark 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 said well-known trademark or mark. 

2.    With regard to the well-known status of “AVEDA”, based on the worldwide trademark registration records, the commercial success, and the continuous efforts of marketing since 1995, TIPO is convinced that “AVEDA” as a trademark is well-known in the product fields of cosmetics, hair salon, and hair dressing on or before the filing date of trademark application for “AROMAVEDA”.

3.    With regard to similarity, TIPO is of the view that in general, “AROMAVEDA” would still be perceived as combination of “AROMA” and “AVEDA”, which makes “AROMAVEDA” visually similar with “AVEDA”. Besides, conceptually, since “AROMA” is an ordinary word, ordinary consumers may view “AVEDA” as the main portion when seeing “AROMAVEDA”, and find “AROMAVEDA” related or associated with “AVEDA”. 

4.    Since “AVEDA” is not related to the nature or function of its designated products, TIPO considers “AVEDA” highly distinctive, and consumers in Taiwan should be more familiar with “AVEDA” in view of the voluminous materials of marketing and sales submitted by AVEDA Corporation. 

5.    Considering that “AVEDA” is well-known in the field of cosmetic and hair product, that ordinary consumers would find “AROMAVEDA” similar with “AVEDA”, that “AROMAVEDA” is also applied for use in cleaning and cosmetic products, and that consumers are more familiar with “AVEDA”, TIPO concludes that the contested trademark “AROMAVEDA” may cause confusion with “AVEDA” among the relevant consumers. As such, “AROMAVEDA” is cancelled in accordance with Article 30.1.11 of Trademark Law.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cDRCVUFWdTNpSzNidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true