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.
沒有留言:
張貼留言