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.
沒有留言:
張貼留言