HP successfully protected its rectangle enterprise logo in trademark opposition before Taiwan’s IP Office

HP HEWLETT PACKARD GROUP LLC (“HP”), the trademark registrant of series of HP enterprise logos in Taiwan (Reg. No. 01809596, 01813821, 01809595, 01809598, 01809597, 01859408, and 01997897, see below), filed opposition against registered trademark no. 02054693 on July 16, 2020, alleging the contested registration would cause confusion with HP’s famous rectangle logo.

The contested trademark, “OneDegree” (see below), was filed by AI FINANCIAL TECHNOLOGY HOLDING COMPANY (“AIF”) on September 20, 2019, and granted on April 16, 2020, designated for use in services under class 42, including “cloud computing, websites building and maintaining, computer software maintenance, software as a service (SaaS), telecommunications technology consulting, computer technology consulting, network security consulting, computer software design, server hosting, and computer software consulting.”

 On January 26, 2022, Taiwan’s IP Office (“TIPO”) sided with HP, finding the contested registration shall be cancelled based on Article 30.1.10 of Trademark Law:

 

1.      Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark is:

1)      being identical with or similar to another person’s registered trademark or earlier filed trademark; and

2)      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

3)      hence there exists a likelihood of confusion on relevant consumers.

2.      Here, TIPO first finds AIF’s contested trademark is similar with HP’s rectangle logo. Both trademarks feature a rectangular frame, and place the words under the featured rectangle. While there is a decorative dot displayed in the contested trademark, TIPO considers such element is too minor to make the contested trademark distinguishable from HP’s asserted trademarks. Overall, the contested trademark is found similar with the HP’s asserted trademarks.

3.      TIPO also notes that HP’s asserted trademarks are designated for use in similar products or services. For example, HP’s trademarks No. 01809596, 01813821, and 01809595 are applied for use in device like communication and internet hardware; and services like cloud computing service, software design, and information technology consulting. TIPO considers these services provide functions that are similar with or supplemental to those as designated by AIF’s contested trademark. Thus, TIPO determines that AIF’s contested trademark is applied for use in services that are similar with or identical to those as designated by HP’s asserted trademarks.

4.      TIPO further notes that evidence has shown that since 2015, HP’s asserted trademarks have been put in use in HP’s various kinds of services, and were subject to continuous and wide media exposure, such as IT PRO Magazine, X Fastest News, DIGITIMES, etc. Thus, TIPO is convinced that HP’s distinctive rectangle logo has established stronger recognizability among the relevant consumers.

5.      In view of the above, considering that the relevant consumers are more familiar with HP’s trademarks, that AIF’s contested trademark does demonstrate certain degree of similarity with HP’s trademarks, and that both trademarks are applied for use in similar services, TIPO rules that AIF’s contested trademark may cause confusion among the relevant consumers. As a result, the contested trademark should be cancelled per Article 30.1.10 of Trademark Law.   

                                                                                                    

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WXBMRUdPOEMrWFd0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Victoria Beckham’s opposition against another registered “VB” trademark in Taiwan fell short

On March 31, 2018, Victoria Beckham (“Opposer”), the founder of her eponymous fashion brand “VB”, filed trademark opposition against Reg. No. 01888812, alleging that said registration violates Article 30.1.11 and Article 30.1.12 of Trademark Act.

 

The contested trademark, the No. 01888812 trademark (see below), was filed on July 19, 2017, and granted on January 1, 2018, designated for use in hair oil, lotion, toner, perfume, lipstick, nail polish, etc. The Opposer contended that the registration of the contested trademark would cause confusion with the Opposer’s well-known “VB” brand, and that the application of the contested trademark is based on intent to imitate the Opposer’s famous brand.

On December 29, 2021, Taiwan’s IP Office (“TIPO”) did not side with the Opposer, finding that:

1.     To prove violation of Article 30.1.11 of Trademark Act, the Opposer has to show that the alleged trademark has obtained well-known status before the filing date of the contested trademark. While there is evidence showing the use of Opposer’s brand “VB” on cosmetic products (such as “VB x Estee Lauder”) and in magazine’s news coverage (such as VOGUE, ELLE, etc.), the volume and duration of such use is insufficient to prove that prior to the filing date of the contested trademark, Opposer’s “VB” brand has been famous among the general public. 

2.     As to Opposer’s contention regarding violation of Article 30.1.12 of Trademark Act, there must be evidence showing that the application of the contested trademark is made based on intent to imitate the earlier used trademark. Here, TIPO agrees that the contested trademark is similar with the Opposer’s brand “VB” and is applied for use in similar cosmetic product. However, the registrant of the contested trademark argued that she has obtained another registered trademark “Vivian Beauty Spa” (Reg. No. 01718900) in 2015, and that she further registered the contested trademark because she considered “VB” as the combination of initials of “Vivian Beauty”. TIPO finds registrant’s aforesaid explanation reasonable, and thus did not find registrant’s filing of the contested trademark based on intent to imitate Opposer’s brand name.

 

In view of the above, the Opposer’s opposition is denied accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VmQweDNjMWJCY0RETXFVNktzdnJCdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true