PayPal successfully challenged “PAYPAYCLOUD” in its trademark opposition before Taiwan’s IP Office

On March 16, 2020, PayPal Inc. (“PayPal”), the registrant of series “PayPal” and “PAYPAL” trademarks in Taiwan (Reg. No. 00191043, 00191961, 01257705, 01354987, 01766166, and 02046601, see below), filed opposition against Paypaycloud Fintech Co. Ltd. (“PFC”), alleging that the registration of PFC’s trademark would cause confusion with PayPal’s aforesaid famous trademarks.

The contested trademark, PFC’s No. 02030281 trademark (see below), was filed on March 15, 2019, and granted on December 16, 2019, designated for use in services under class 35, including department store, convenience store, establishing computer information database, management of computer files and database, maintenance and renewal of registered data, online shopping, etc.

On December 29, 2021, Taiwan’s IP Office (“TIPO”) found in PayPal’s favor, determining that PFC’s “PAYPAYCLOUD” trademark violates Article 30.1.11 of Trademark Law. The reasons held by TIPO are as follows:

1.      Article 30.1.11 of Trademark Law provides that a trademark shall not be registered if such a trademark is being 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 the said well-known trademark or mark.

2.      Based on the evidence submitted by PayPal, including the worldwide trademark registrations of “PayPal” and “PAYPAL”, the adoption of PayPal’s service in a wide range of local businesses, including the popular B2B online trading platform TaiwanTrade, and the relevant news reports, TIPO is convinced that PayPal’s cited trademarks are well-known in the area of third-party payment service.

3.      As to similarity, TIPO notes that “PAYPAYCLOUD” would be perceived as combination of “Pay”, “Pay”, and “Cloud”. Since “Cloud” carries the meaning of cloud service, it would be less distinctive when being used in service like computer database. Accordingly, “PAYPAY” would constitute the dominant portion of PFC’s contested trademark, and TIPO opines that no matter it is “PayPal” or “PAYPAL”, they are both similar with “PAYPAY”.

4.      In addition, TIPO finds that PFC’s contested trademark is applied for use in service that is similar with or relevant to the designated service of PayPal’s well-known trademarks, because the latter is used to facilitate the former, and both services are related to meeting consumer’s demands for processing online transaction and payment.  

5.      TIPO also finds that “PayPal” as a trademark is highly unique, since it is not a mere combination of common words. Further, TIPO notes that through PayPal’s continuous use and marketing, “PayPal” has achieved the status of well-known trademark and the consumers would be more familiar with PayPal’s trademark.

 

In view of the above, considering that “PAYPAYCLOUD” is similar with “PayPal”, that it is applied for use in similar services, that “PayPal” and “PAYPAL” are well-known, and that consumers are more familiar with PayPal’s famous trademarks, TIPO determines that registration of PFC’s contested trademark might cause confusion with PayPal’s well-known trademarks. Therefore, “PAYPAYCLOUD” is cancelled by TIPO in view of violation of Article 30.1.11 of Trademark Law.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VzlsZ3RpVWRvdyt4Um9yc1NaeW9BQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Conde Nast successfully challenged the trademark registration of “VOGUE BEAUTY” in Taiwan’s IP Office

Conde Nast ASIA/PACIFIC, INC. (“Conde Nast”), the registrant of trademarks no. 01307044 and 00949897 (see below), filed opposition against CHUNG WEI BIOMEDICAL CO., LTD. (“CWB”) on March 15, 2021, alleging that CWB’s trademark “VOGUE BEAUTY” should be cancelled for causing confusion with Conde Nast’s famous “VOGUE” trademarks.

 

The contested trademark, CWB’s “VOGUE BEAUTY”, was filed for registration on April 14, 2020, and granted December 16, 2020 (Reg. No. 02109293, see below), designated for use in rental service for e-book reader under class 41. Conde Nast contended that registration of “VOGUE BEAUTY” violates, among the others, Article 30.1.10 of Trademark Law, which provides that a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

 Taiwan’s IP Office (“TIPO”) sided with Conde Nast on November 25, 2021, finding that registration of “VOUGE BEAUTY” should be cancelled for being confusingly similar with Conde Nast’s “VOGUE” trademarks:

 

1.    Similarity of Trademark:

TIPO finds CWB’s “VOGUE BEAUTY” similar with Conde Nast’s “VOGUE”. Although “VOGUE” and “BEAUTY” are common words with ordinary meanings, TIPO opines that when viewing “VOGUE BEAUTY”, consumers would not consider such combination of words creates unique meaning. Since both “VOGUE BEAUTY” and “VOGUE” share the same word “VOGUE”, CWB’s contested trademark is considered visually and verbally similar with Conde Nast’s “VOGUE”.

2.    Similarity of goods and services

TIPO notes that CWB’s “VOGUE BEAUTY” is designated for use in rental service for e-book reader, while Conde Nast’s “VOGUE” are designated for use in products like “electronic publication” and “books and magazines downloadable from internet”, which seem to be different from each other. However, in view of the trend of digitization of publications, the use of e-book will only become more and more popular. Under this context, TIPO finds that the products designated by Conde Nast’s “VOGUE” (i.e., electronic publication and downloadable books) may be provided through using the service designated by CWB’s “VOGUE BEAUTY” (i.e., rental service for e-book reader). To this respect, the designated products and service actually serve the same or relevant purpose for consumers. Thus, TIPO considers the services designated by CWB’s trademark somewhat associated with the products designated by Conde Nast’s “VOGUE”.

3.    Strength of the trademark:

TIPO further finds that based on the evidence of profound use of Conde Nast’s “VOGUE” trademark, including the successful and continuous publishing of the world-wide famous fashion magazine “VOGUE”, and the development of its associated cosmetic and beauty service, Conde Nast’s alleged trademarks have become famous among the relevant consumers.

 

In view of the above, considering that Conde Nast’s “VOGUE” is well-known, that CWB’s “VOGUE BEAUTY” is similar with Conde Nast’s “VOGUE”, that CWB’s “VOGUE” is applied for use in associated services, and that consumers are more familiar with Conde Nast’s famous “VOGUE” trademark, TIPO determines that registration of CWB’s “VOGUE BEAUTY” would cause confusion with Conde Nast’s famous “VOGUE” trademarks. As a result, TIPO rules that CWB’s “VOGUE BEAUTY” should be cancelled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjRRYmxtZWNQa2cwVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Taiwan’s IP Office found there would be no confusion between “MediaTek Turing” and “NVIDIA TURING”

On June 16, 2020, NVIDIA CORPORATION (“NVIDIA”), the registrant of trademark no. 02070494 (see below), filed opposition against MediaTek Inc. (“MediaTek”), alleging that the registration of MediaTek’s “MediaTek Turing” shall be cancelled due to violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

The challenged trademark, “MediaTek Turing” (Reg. No. 02049241, see below), was filed on October 3, 2019, and granted on March 16, 2020, designated for use in goods under class 9 (e.g., semiconductor, integrated circuits, chipset, printed circuit boards, computer programs, computer software, etc.) and services under class 42 (e.g., computer software design, integrated circuit design, software design for artificial intelligence, etc.).

On November 26, 2021, Taiwan’s IP Office (“TIPO”) sided with MediaTek, finding the registration of “MediaTek Turing” would not cause confusion with “NVIDIA TURING”:

1.    NVIDIA argued that both “MediaTek Turing” and “NVIDIA TURING” share the word “Turing/TURING”, so the degree of similarity between “MediaTek Turing” and “NVIDIA TURING” should be quite high. MediaTek countered that “TURING” in general would be perceived as the name of the well-known computer scientist Mr. Alan Mathison Turing, so the word “TURING” should not be distinctive if being used for the designated goods under class 9 and services under class 42, which are related to computer technology and design of algorithm.

2.    TIPO found for MediaTek, finding that the word “TURING” would not be distinctive when being used in the designated goods and services, and that consumers would find the initial words in both trademarks, namely, “NVIDIA” and “MediaTek”, more distinctive and appealing. In other words, consumers would view the trademarks in their entirety, which include “NVIDIA” and “MediaTek”, rather than focus only on “Turing” and “TURING”, to identify the source of the provided goods and services. Thus, TIPO posited that consumers would not find “MediaTek Turing” and “NVIDIA TURING” similar with each other.

3.    NVIDIA also argued that when MediaTek filed its application for “MediaTek Turing” on October 3, 2019, “NVIDIA TURING” has already been a famous trademark. To this end, TIPO noted that the evidence submitted by NVIDIA did show that “NVIDIA” as a trademark has been put in use and well-known among the relevant consumers. However, there is less evidence showing “NVIDIA TURING” has gained the same well-known status. More evidence, such as sales records showing the revenue of products bearing the trademark “NVIDIA TURING” and the corresponding market share of these products, is needed.

TIPO agreed that the designated products and services of “MediaTek Turing” are similar with those of “NVIDIA TURING”. Nonetheless, considering the facts that “MediaTek Turing” and “NVIDIA TURING” are both distinctive, that consumers would not find “MediaTek Turing” and “NVIDIA TURING” similar with each other, and that evidence is insufficient to prove “NVIDIA TURING” as a trademark has obtained well-known status when “MediaTek Turing” was filed for application, TIPO determined that the registration of “MediaTek Turing” would not cause confusion with “NVIDIA TURING”, and thus there is no violation of the cited Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VlBKdWh4MFpLM0gyZm1UbmdtaTBJUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true