Michael Kors scored a win for its “MK” trademark

 On April 29, 2022, Taiwan’s IP Office (“TIPO”) found in favor of MICHAEL KORS (SWITZERLAND) INTERNATIONAL GMBH (“Michael Kors”), determining that trademark no. 02140941 should be canceled in view of likelihood of confusion with Michael Kors’ trademark (Reg. No. 01770999, see below).

 

The challenged trademark (see below) was filed on September 21, 2020, and granted on May 16, 2021, designated for use in goods under class 18, including various kinds of bags, purses, wallets, handbags, tote bags, backpacks, school bags, briefcases, luggage, vanity cases, shopping bags, pet bags, pet backpacks, and umbrella. Michael Kors filed cancellation on August 13, 2021, contending among the others, that registration of the challenged trademark would cause confusion with Michael Kors’ “MK” logo.

TIPO sides with Michael Kors, finding that:

1.    The challenged trademark is composed of the letter “N” and “<”, and there is only little space in between. When seeing the challenged trademark, consumers would easily perceive it as “NK”, instead of “N<”. From this perspective, TIPO considers the challenged trademark is similar with Michael Kors’ cited “MK” trademark. However, in entirety, since there is additional characters “Michael Kors” presented in Michael Kors’ cited trademark, TIPO is of the view that the degree of similarity between the challenged trademark and the Michael Kors’ trademark is not high.

2.    As to the similarity of goods, TIPO notes that Michael Kors’ cited trademark is also designated for use in goods under Class 18, which includes handbag, purses, luggage, suitcase, briefcase, etc. Hence, TIPO determines that the challenged trademark is applied for use in products that are highly similar with Michael Kors’ trademark.

3.    TIPO agrees that Michael Kors’ “MK” logo is highly distinctive, and has become a very popular brand in Taiwan. Currently, Michael Kors has 15 stores, and has been very active in promoting and marketing its products. As such, TIPO finds consumers are more familiar with Michael Kors’ “MK”.

4.    In view of the above, although the similarity between Michael Kors’ “MK” trademark and the challenged trademark is not high, considering: 1) the high similarity of the products designated for use by the challenged and cited trademark, 2) the fact that Michael Kors’ cited trademark is more famous; and 3) that consumers are more familiar with Michael Kors’ “MK” logo, TIPO rules that registration of the challenged trademark may cause confusion among the relevant consumers. As a result, the registration of the challenged trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZC9zTkZvVjlrSXJnM1k3cXRXSG5qQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s Intellectual Property and Commercial Court sided with Safe Skies LLC, finding “TSA LOCK” registered by Travel Sentry Inc. shall be revoked for being a generic term

On May 11, 2022, Taiwan’s Intellectual Property and Commercial Court (“TIPC”) vacated the determination of Taiwan’s IP Office, and ruled in Safe Skies LLC’s favor by finding the trademark “TSA LOCK” registered by Travel Sentry Inc. shall be revoked because it has become a generic term for goods such as luggage, suitcases or backpacks.

 

Factual Background:

On September 2, 2005, Travel Sentry Inc. (“TSI”) filed trademark application for its “TSA LOCK”, which was designated for use in goods under class 6 (metal locks for luggage), class 18 (backpacks, sports carry bags, carry-on bags, travel bags, beach bags, briefcases, handbags, suitcases, trunks, luggage, fanny packs and wallets), class 20 (non-metallic locks for luggage), and class 22 (luggage straps). TSI’s application for “TSA LOCK” was subsequently granted as trademark no. 1227603 (see below).

Prior Proceeding:

On September 28, 2018, Safe Skies LLC (SSL) filed revocation action against TSI, alleging “TSA LOCK” shall be revoked for being a generic term in the trade. Taiwan’s IP Office (TIPO) partially granted SSL’s request, finding registration of “TSA LOCK” shall be revoked for class 6 and 20, but denying SSL’s revocation request for class 18 and class 22. After the Petitions and Appeals Committee rejected its appeal on November 18, 2020, SSL decided to appeal to TIPC for further review.

 

Issue:

Per TIPC, the issue to be reviewed is whether TSI’s “TSA LOCK” is a generic term, which shall be revoked per Article 63.1.4 of Trademark Law.

 

Court’s reasoning:

1.   The TIPC begins by looking into the applicable law, which provides that “The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following…..(4) where a trademark has become the generic mark or term, or common shape for the designated goods or services” (see Article 63.1.4 of Trademark Law).

2.   The legislative purpose is to safeguard the public interest such as market competition when a trademark, due to lack of due diligence or improper use by its registrant, has lost its distinctiveness and become a generic term that is commonly used in the trade. The burden is on the movant party to show that most of the relevant consumers would no longer consider such a trademark as an indicator of source of goods or services, but as a generic term that is commonly used by the relevant businesses

3.   Turning to the trademark at issue, here, the Court notes that “TSA” is the abbreviation of Transportation Security Administration, a US organization that has authority over the security of transportation system, including unlocking and inspecting passengers’ suitcases. The Court also notes that based on news reports such as USA Today and Linuxpilot, TSA lock refers to a specific lock that TSA could smoothly unlock, and that passengers who use such type of lock on their suitcases are less likely to suffer damages caused by TSA’s inspection (because TSA need not open by force). Accordingly, ordinary consumers, upon seeing TSI’s trademark “TSA LOCK”, would consider such a mark refers to a specific type or name of lock, rather than the source of products provided by TSI.

4.   The Court further strengthens its finding by referring to the webpages submitted by SSL, which show lots of suitcase or luggage products use “TSA lock” to manifest that they are equipped with TSA lock. Thus, the Court is convinced that TSA lock has become a generic term due to commonly used by the relevant businesses. Most consumers, upon seeing TSA lock used by relevant vendors, would understand that it means their products use TSA lock, which is a type of lock, rather than TSI’s registered trademark.

5.      Although TSI argues that “TSA” does not necessarily mean “Transportation Security Administration”, and raised other organizations’ names as rebuttal evidence, the Court finds such argument unpersuasive. It is because in TSI’s own supporting document, TSI specifically mentions that “For usage in USA the TSA LOCK^TM brand name must be replaced with ‘Travel Sentry^R Approved Locks’”. The Court believes that it proves TSI knows TSA refers to Transportation Security Administration, so it avoids using TSA to prevent confusion.

6.   In view of the above, the TIPC determines that TIPO was erroneous in not finding “TSA LOCK” a generic term for products under class 18 and 22. The original findings made by TIPO is vacated, and TSI’s trademark registration for “TSA LOCK” is revoked by TIPC accordingly.

 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,110%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c2%2c20220511%2c2