On
February 23, 2022, Taiwan’s IP Office (“TIPO”) sided with DC Comics in its
opposition against trademark no. 02100701, finding the contested trademark is
filed out of registrant’s intent to imitate DC Comics’ famous bat emblem (see
below).
The contested trademark (see below) was filed on June 17, 2020, and granted on November 16, 2020, designated for use in goods under class 18, such as backpack, shoe bag, suitcase, shopping bag, trekking poles, umbrellas, etc.
DC
Comics filed opposition on February 17, 2021, contending the registration of
the contested trademark violated Article 30.1.12 of Trademark Law, which
provides that a mark shall not be registered if such a mark is:1) being
identical with or similar to another person’s earlier used trademark, and 2) to
be applied for goods or services identical with or similar to those for which
the earlier used trademark is applied, 3) where the applicant with the intent
to imitate the earlier used trademark, being aware 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,
files the application for registration.
Here,
TIPO finds for DC Comics based on the following reasons:
1.
Based
on evidence submitted by DC Comics, it is clear and undisputed that DC Comics’ Bat
Emblem has been put in used on various kinds of products since as early as
1997, including, among the others, clothing, hats, backpacks, shoes, and
umbrellas that feature the well-known Bat Emblem. Thus, there is no doubt that
DC Comics’ Bat Emblem is an earlier used trademark.
2.
TIPO
also notes that both trademarks feature bat silhouettes, which constitute the
dominant portion of the trademarks. In addition, TIPO considers the overall
contour and the style of the bat silhouette presented in the contested
trademark are highly similar with those presented in DC Comics’ Bat Emblem. In
other words, the contested trademark is visually and conceptually similar with
DC Comics’ Bat Emblem.
3.
Further,
TIPO is aware that the contested trademark is applied for use in goods that is
similar with or relevant to products in which DC Comics’ Bat Emblem is applied
for use. It is likely that consumers would perceive products bearing the
contested trademark to be associated with product supplied by DC Comics.
4.
Considering
the facts that DC Comics has put its Bat Emblem in use for a very long time, and
that the Bat Emblem is distinctive and has become well-known among the relevant
consumers and fans, TIPO is of the view that it is unlikely that the registrant
would file application for such a highly similar trademark out of pure
coincidence. As such, TIPO determines that the total circumstances justify a
finding of registrant’s intent to imitate DC Comics’ Bat Emblem, and that the
contested trademark should be cancelled in view of Article 30.1.12 of Trademark
Law.
Source:
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