Taiwan’s IP Office canceled a trademark in view of its similarity with the famous “Apple Logo”

 Apple, the owner of the iconic “Apple Logo” (see below), filed opposition on February 17, 2021, alleging that the registration of no. 02101465 would cause confusion with its famous “Apple Logo”, which violates Article 30.1.11 of Trademark Act. 

On March 24, 2022, Taiwan’s IP Office (“TIPO”) sided with Apple, finding the registration of the contested trademark should be canceled:

1. Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is similar with other’s well-known trademark, and hence there exists likelihood of confusion on the relevant public, or likelihood of confusion of the distinctiveness or reputation of the well-known trademark.

2. The contested trademark “GC and device” (see below) was filed for application on June 15, 2020, and granted on November 16, 2020, designated for use in goods under class 31, including radish, carrot, pet treats, mushroom, fragrance sand for pet’s defecation, etc. 

3. TIPO noted that while there are characters “G” and “C” placed in the middle of a red apple, the shape and contour of the apple presented in the contested trademark are very similar with those of Apple’s famous logo. Apparently, there is a bite at the right side of the apple. Thus, ordinary consumers would find the apple presented in the contested trademark is very similar with Apple’s famous logo.  

4. TIPO also noted that Apple’s logo has achieved worldwide recognition and obtained well-known status based on its highly successful products and continuous use of “Apple Logo”. In other similar cases, TIPO also determined that the “Apple Logo” has become well-known in Taiwan. There is no doubt that the degree of popularity and recognizability of the “Apple Logo” is high among the general public.

5. In addition, upon further review, TIPO found that almost all of registered trademarks which presented an apple with a bite at its right side are owned by Apple. In other words, it is not that common for one to use a bitten apple as trademark. Hence, even though the contested trademark is applied for use in goods that is not that relevant to Apple’s products or service, it is still likely that the unique distinctiveness of “Apple Logo” would be diluted due to registration of the contested trademark.   

6. Given that the Apple Logo is well-known and highly distinctive, that the contested trademark is highly similar with the Apple Logo, and that it is likely that the distinctiveness of “Apple Logo” would be diluted due to registration of the contested trademark, TIPO determines that the contested trademark violates Article 30.1.11 of Trademark Act. The registration of the contested trademark is  canceled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RmlLbGt3SStqQUczdW93Vms0WXBWUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Taiwan’s Intellectual Property and Commerce Court found dining utensils not protectable as artistic work

In a decision rendered on March 17, 2022, Taiwan’s Intellectual Property and Commerce Court (“IPC Court”) determines that Appellant’s alleged design of dining utensils do not constitute protectable artistic work under Copyright Act, and rejects Appellant’s copyright claim accordingly.

According to Copyright Act, for a work to be eligible for protection as artistic work, such work must be original, namely, the work demonstrates aesthetic appeal through artistic skills, such as sketching, painting, sculpturing, etc. 

Here, the Appellant argued that the dining utensils it created should be  copyrightable as artistic work, alleging that the shape and curve of the outer appearance of the tableware demonstrate aesthetic feature. The IPC Court disagreed. 

While noting the edge of Appellant’s plate demonstrates a triangular curve, the IPC Court still considers the overall shape and design of the plate are functional, which aim to hold or contain the meal or soup, and have not demonstrated unique or decorative aesthetic characteristic (see below).

Although there is a rabbit icon featured on the top of Appellant’s plate (see below, right), testimony from witness already showed that such icon is a pure reference to a popular cartoon figure, without any further originality contributed by the Appellant. As a result, the IPC Court is of the view that the plate, the fork, the spoon, etc., are only useful articles without showing aesthetic feature via sufficient artistic skills. The shapes and structures of these articles are all closely related to their utilitarian aspects as dining tools. The Appellant’s tableware products should not be copyrightable as artistic work.

The Appellant further argued that the alleged tableware is an award-winning product, which should be sufficient to prove its originality and should support a finding of eligibility for copyright protection. The IPC Court, however, opines that the fact that the tableware product ever won Red Dot Design Award has no bearing with whether the outer design of said product is copyrightable. Considering that products like forks, spoons, and plates are dining tools and their structures and shapes are not separable from the functions they serve, and that there is no noticeable difference between Appellant’s tableware products and other ordinary dining tools, the IPC Court finds Appellant fails to meet the burden of proving originality. 

Based on the above, the IPC Court rules that although there is similarity between the Appellant’s tableware and Appellee’s product, there is no infringement of a valid copyright. 

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,110%2c%e6%b0%91%e8%91%97%e4%b8%8a%e6%98%93%2c6%2c20220317%2c1