2021年12月12日 星期日

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 

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