Shiseido’s “COGNAC DIAMOND” is cancelled due to likelihood of confusion with the French town well-known for the classic brandy production

 On July 8, 2019, Shiseido Company, Ltd. (“Shiseido”) filed trademark application for “COGNAC DIAMOND”, which was applied for use in goods under class 3, including soap, fragrance, perfume, cosmetics, cleansing lotion, hair oil, hair conditioner, cream, lotion, cotton pad, essential oil, shampoo, conditioner, hair dye, toothpaste, etc. Shiseido’s aforesaid trademark was granted on December 16, 2019 (Reg. No. 02028451, see below)

On March 12, 2020, the Bureau National Interprofessionnel du Cognac (“BNIC”) and the Institut national de l'origine et de la qualité (INAO) filed opposition against Shiseido’s registered “COGNAC DIAMOND”, alleging that such registration violated Article 30.1.8 of Trademark Law.

Taiwan’s IP Office (“TIPO”) sided with BNIC and INAO on November 30, 2021, determining that “COGNAC DIAMOND” should be cancelled for such trademark might be misleading as to the quality or origin of its designated goods.

 

1.      Article 30.1.8 of Trademark Law provides that a mark shall not be registered if such a mark is “likely to mislead the public as to the nature, quality, or place of origin of the goods or services”.

2.      Based on the relevant French regulations, reports on Wikipedia, and the magazines that introduces French wine, TIPO agreed that before December 16, 2019, “Cognac” has been widely understood and recognized by the general public as the name of place where the classic brandy is made. In other words, ordinary consumers would know “Cognac” refers to a specific place in western France that is well-known for its brandy production.

3.      When examining Shiseido’s “COGNAC DIAMOND”, TIPO noted that in comparison with “COGNAC”, “DIAMOND” is a common and less distinctive word that consumer with ordinary care would not pay attention to. Thus, TIPO was of the view that “COGNAC” constitutes the main distinctive portion of Shiseido’s contested trademark.

4.      Considering the facts that “Cognac” is generally perceived as the name of the place in France that produces well-known brandy, and that “COGNAC” would be the distinctive portion of Shiseido’s contested trademark, TIPO concluded that consumers may mistakenly believe that the cosmetic products designated by Shiseido’s “COGNAC DIAMOND” are associated with or relevant to the aforesaid region of western France, and confuse the quality, origin, or nature of the designated products.

In view of the above, TIPO determined that Shiseido’s “COGNAC DIAMOND” should be cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3VSMDRpRFpFTVBkZS9FcHpMWjlvQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Taiwan’s IP Office considers the brand territory of “BENTLEY” is not limited to auto industry, and cancels an identical trademark that is applied for use on alcoholic products

On November 16, 2021, Taiwan’s IP Office (TIPO) decided to cancel a trademark, “BENTLEY”, registered by Aucera S.A. (“Aucera”), finding such trademark would cause confusion with the brand held by the worldwide famous car giant Bentley Motors Limited (“BML”).

BML’s trademark, “BENTLEY” (Reg. No. 00173595, see below), is registered in as early as 1981 in Taiwan, designated for use in goods such as auto parts, engine, automobile chassis, transmission gears, wheel brakes, etc.

 

Aucera’s contested trademark, which also uses the word “BENTLEY” (Reg. No. 02079373, see below), was filed on December 5, 2019, and granted on August 16, 2020, designated for use in various kinds of alcoholic beverages such as rice wine, red wine, white wine, liquor, brewed wine, ginseng wine, etc.

 

BML filed opposition against Aucera on November 16, 2020, contending registration of Aucera’s “BENTLEY” would cause confusion with BML’s famous trademark “BENTLEY”.

 

TIPO sided with BML based on the following reasons:

1.    Given the voluminous evidence supporting the long term and continuous use of BML’s “BENTLEY” trademark, including trademark registration records, marketing materials, news reports, establishment of service centers, and the sale records, TIPO is convinced that when Aucera filed application for “BENTLEY”, BML’s “BENTLEY” is already a famous trademark in the field of auto industry in Taiwan.

2.     It is also noted that Aucera uses exactly the same word “BENTLEY”. The degree of similarity between Aucera’s and BML’s trademarks are high. Moreover, “BENTLEY” is highly distinctive since it is not relevant to the nature or function of the products in which it is applied for use.  

3.     It is further noted that aside from auto industry, BML’s “BENTLEY” has been put in use for various kinds of products. For example, there is record showing BML uses “BENTLEY” in products such as watches, ties, glasses, and water bottle. In 2019, in celebration of the brand’s 100^th anniversary, BML also teamed up with Champagne Comtes de Dampierre, and delivered very popular Champagne gift box to the market. Indeed, the use of BML’s “BENTLEY” is not only continuous, but also highly diversified. Therefore, consumers are more familiar with BML’s “BENTLEY”.

4.     In view of the high degree of similarity with BML’s well-known “BENTLEY”, the facts that “BENTLEY” is distinctive, that consumers are more familiar with BML’s famous trademark, and that BML’s famous trademark has been used on various kinds of products, TIPO ruled that the registration of Aucera’s “BENTLEY”, though intended for use on alcoholic products, might still cause confusion with BML’s aforesaid well-known trademark. Hence, Aucera’s contested trademark is cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UkdaSG01TDlYQXBBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled trademark registered by musical store after finding its registration was based on intent to imitate the stage name of U2’s guitarist

On November 15, 2021, Taiwan’s IP Office (TIPO) cancelled a trademark registered by Top Music Co. Ltd. (Reg. No. 02024861, see below), finding that such trademark was too similar with the stage name of U2’s lead guitarist, “Edge”, and that such high degree of similarity was based on the intent to imitate the worldwide famous guitar player of the legendary rock band.

 

The contested trademark was filed on March 7, 2019, and granted on November 16, 2019, designated for use in goods under class 15 and 17, including musical instrument box, drum, drum sticks, electronic musical instrument, music synthesizer, musical instrument, music box, tuner for musical instruments, musical notation device, etc. The well-known rock guitarist filed opposition on February 14, 2020.

 

The key issue is whether the contested registration violates Article 30.1.12 of Trademark Law, which prescribes that a mark shall not be registered if such a mark:

1.      Is identical with or similar to another person’s earlier used trademark;

2.      Is to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied; and

3.      Is filed by the applicant with the intent to imitate the earlier used trademark based on applicant’s awareness of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark.

 

The registrant of the contested trademark argues that there is no violation of Trademark Law, because “edge” is only a common word with ordinary meaning, and the contested trademark, which demonstrates additional stylization, is dissimilar with the stage name of U2’s lead guitarist. TIPO disagreed.

 

1.      First, based on the news reports, albums, and the sales records of guitar products featuring the famous U2 guitarist’s name “Edge”, TIPO is convinced that “Edge” as a trademark has been put in use on relevant musical merchandise before the filing date of the contested trademark.

2.      Second, while there is a stylized letter “E” presented in the contested trademark, TIPO finds the contested trademark still uses exactly the same word “edge”, which is visually, verbally, and conceptually similar with the stage name of the rock guitar player. Considering such high degree of similarity, together with the fact that both trademarks are used for musical products, TIPO opines that consumer with ordinary degree of care would find the contested trademark associated with the U2 lead guitarist.

3.      Although the registrant argues that “Edge” is simply a common word, so that registrant has no intent to imitate the name of the U2 guitar player, TIPO finds this argument unpersuasive. The word “Edge” is distinctive when being used in musical products. Added to that, the degree of similarity is too high. Since registrant runs a musical store, it is difficult for TIPO to believe that it would have no knowledge of the stage name of the lead guitarist of the worldwide famous rock band U2.

 

In view of the above, TIPO concludes that such high degree of similarity between the contested trademark and the stage name of the famous guitar player could only be explained by intent to imitate, rather that pure coincidence. Thus, the contested trademark was cancelled accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4eXZRYkZaVTA2ZCt6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Taiwan’s IPC Court affirmed Nintendo’s copyright win for its iconic Pokémon characters

In its decision rendered on November 18, 2021, Taiwan’s IP and Commercial Court (“IPC Court”) affirmed Nintendo’s copyright infringement claims against two local toy vendors, finding the stuffed toys sold by the defendants (see below) infringing Nintendo’s copyrighted Pokémon characters, including Charizard, Mewtwo, Dragonite, and Mega Charizard X.

At the first instance level, the court determined that Nintendo's Pokémon dolls (see below) featuring Charizard, Mewtwo, Dragonite, and Mega Charizard X are eligible for copyright protection as artistic works, and ruled that the stuffed toys supplied by the defendants are substantially similar with Nintendo’s aforesaid copyrighted works based on the overall feeling and concept test.

On appeal, the defendants argued, among the others, that the asserted copyrights are pictures of Pokémon cartoon characters (see below), so the lower court erred by comparing the Pokémon dolls against the accused stuffed toys, rather, the infringement analysis should be made between the aforesaid two-dimensional picturial works and the stuffed toys, which are three-dimensional.

The IPC Court ruled that even under defendants’ scenario, the accused stuffed toys are still substantially similar with the pictures of Nintendo’s Pokémon cartoon characters. The IPC Court reasoned that since the introduction of Pokémon cartoon characters in 1996, there have been various versions of Pokémon characters, including two-dimensional and three-dimensional works, created and adopted by Nintendo in view of the nature of medium on which these characters are featured and displayed. The IPC Court found that no matter it is video game, cartoon, stationery, doll, toy, or the so-called cute versions, the featured Pokémon characters all demonstrate the same main features, and they are all protectable under copyright. Since these copyrighted features could also be found in defendants’ accused stuffed toys, the IPC Court ruled the defendants’ stuffed toys still constitute copyright infringement.

The defendants are subject to injunction and damages liability, but may still challenge the judgment by appealing to the Supreme Court.  

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,110%2c%e6%b0%91%e8%91%97%e4%b8%8a%2c11%2c20211118%2c1