2022年5月7日 星期六

Foodpanda successfully challenged another “foodpanda” trademark in opposition proceeding by exerting its well-known status in food delivery service

On March 31, 2022, Foodpanda, one of the leading food delivery platforms in Taiwan, successfully canceled trademark registration No. 02103953 (the ‘953 trademark) for such a mark may cause confusion with its highly popular brand name.

 


The contested trademark, ‘953 trademark (see below), was filed for registration on May 7, 2020, and granted on December 1, 2020, designated for use in goods under class 9, including headphones, audio speakers, driving video recorders, microphones, video recording appliances, wireless headphones, hand-free device, etc. Foodpanda filed opposition against ‘953 trademark on February 25, 2021, alleging registration of ‘953 trademark violated, among the others, Article 30.1.11 of Trademark Act.

Taiwan’s IP Office (“TIPO”) sided with Foodpanda on March 31, 2022, finding the registration of ‘953 trademark would cause confusion with the famous brand name of the food delivery service:

 

1.    Per Article 30.1.11, a mark shall not be registered if such a mark 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 Foodpanda, including the news reports, marketing documents, records of exposure on social media platforms, and audio-visual advertising materials, TIPO is convinced that prior to May 7, 2020, “Foodpanda” has become famous and well-known among the public for food delivery service in Taiwan.

3.    As to similarity, it is clear that the contested ‘953 trademark is identical with the famous “Foodpanda” brand name, because both feature the same words.

4.    Since the famous brand name “Foodpanda” demonstrates a unique combination of two unrelated word “food” and “panda”, TIPO is of the view that “Foodpanda” as a brand name is highly distinctive. Besides, TIPO notes that consumers are more familiar with such brand name after Foodpanda’s continuous and successful marketing and promoting.

5.    Although the contested ‘953 trademark is applied for use in goods like headphones, microphones, driving video recorders, etc., TIPO considers these products are devices and tools that are commonly used by Foodpanda’s deliverymen when providing their delivery services. TIPO thus holds the view that the products which ‘953 trademark is applied for use are related to or associated with the service provided by Foodpanda.

6.    In view of the above, given that Foodpanda as a brand name is already famous and more well-known prior to the filing date of ‘953 trademark, that the contested ‘953 trademark is identical with Foodpanda’s brand name, and that the ‘953 trademark is designated for use in goods that are associated with or relevant to the food delivery service, TIPO determines that the registration of ‘953 trademark may cause confusion with Foodpanda’s famous brand name. Therefore, the registration of ‘953 trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZVJ0cUpFNEIrTnhWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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