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 100th 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.
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