Taiwan’s IP Office finds “鬼滅之刃” (“Demon Slayer”), the title of the popular Japanese manga, a well-known trademark

 On June 28, 2022, Taiwan’s IP Office (“TIPO”) found in favor of KABUSHIKI KAISHA SHUEISHA (“SHUEISHA”), finding that SHUEISHA’s trademark “鬼滅之刃” (“Demon Slayer”) a well-known trademark, and that trademark no. 02085753 should be cancelled in view of likelihood of confusion with SHUEISHA’s aforesaid famous trademark.

“鬼滅之刃”(‘’Demon Slayer”) is a highly popular and famous Japanese manga illustrated by Koyoharu Gotouge. It was published and serialized by SHUEISHA in February of 2016. The anime could be seen on multiple streaming platforms, including Netflix, and the movies “Mugen Train” released in 2020 has become the blockbuster in the same year. Both the manga and its anime adaptions achieved great success. In addition, SHUEISHA also developed various kinds of merchandise and derivatives around this phenomenal manga series, including stage show, TV show, and video games. In Taiwan, SHUEISHA already obtains trademark registration for its “鬼滅の刃” (For example, Registration No. 02110030, see below).

The contested trademark, which also features the same combination of Chinese letters “鬼滅之刃” (Registration No. 02085753, see below), was filed on March 9, 2020, and granted on September 16, 2020, designated for use in goods under class 28, such as fishing rods, fishing line, fishing gear, fishing reels, fishing hook, etc. SHUEISHA filed opposition on December 14, 2020, citing violations of Trademark Law. 

TIPO sided with SHUEISHA in its determination on June 22, 2020, based on the reasons below:

 

1.      Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such a mark is 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 voluminous evidence submitted by SHUEISHA, including the sales records of the “Demon Slayer” manga, the box office records of the adapted movies, the news reports, and the “Demon Slayer” themed merchandise, TIPO was convinced that at the time when the application of the contested trademark was filed, SHUEISHA’s “鬼滅之刃” is not just the title of famous comic book, but has become a well-known trademark among the relevant consumers.

3.      The contested trademark and SHUEISHA’s well-known trademark are both comprised of the same Chinese letters “鬼滅之刃”, so it is clear that the contested trademark is highly similar with SHUEISHA’s well-known trademark.

4.      TIPO also notes that SHUEISHA’s well-known trademark is highly distinctive and has been put in use on diverse products, such as notebooks, backpack, cup, umbrellas, toys and figures, etc. SHUEISHA’s well-known trademark has built strong impression among the relevant consumers. On the other hand, TIPO finds the registrant of the contested trademark seemingly uses font and word style that are similar with SHUEISHA’s well-known trademark when presenting the contested trademark together with registrant’s fishing products on Shopee. It is hard to gainsay that the contested trademark was filed with intent to imitate SHUEISHA’s well-known trademark.  

5.      While the contested trademark is applied for use in different kinds of goods, TIPO specifically points out that in the manga, there is a famous character “Giyu Tomioka” (the Water Pillar) whose go-to move is “water breathing”. In this light, it is highly likely that tools and accessories related to water will be used or presented in the Demon Slayer themed merchandise or COSPLAY. Therefore, TIPO opines that product like fishing rod and fishing gear should still be goods that are associated with or related to SHUEISHA’s well-known trademark.

In view of the above, considering the well-known status of SHUEISHA’s “鬼滅之刃”, the high similarity of the contested trademark, the diversity of the Demon Slayer themed merchandise, and registrant’s bad faith, TIPO finds the registration of the contested trademark may still cause confusion with the SHUEISHA’s well-known trademark, even though the contested trademark is applied for use in fishing gears. As such, the contested trademark shall be cancelled due to violation of Article 30.1.11 of Trademark Law.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bTYvMU1iRzU4dGlPYWwvV2hEWktnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German Optical Equipment Manufacturer ZEISS Successfully Canceled Trademark “ZEISHI LOOK” Before Taiwan’s IP Office

On May 31, 2022, Taiwan’s IP Office (TIPO) rendered a determination in favor of CARL ZEISS AG (“ZEISS”), the German leading enterprise operating in the field of optics and optoelectronics, finding the trademark “ZEISHI LOOK” is similar with ZEISS’ registered trademark “ZEISS” (Reg. No. 00080541, see below), and thus shall be canceled accordingly.

 

The contested trademark “ZEISHI LOOK” (Reg. No. 02088869, see below) was filed on February 4, 2020, and granted on October 1, 2020, designated for use in goods under class 9, including sports protective glasses, glasses frames, sunglasses, contact lenses; glasses cases; glasses lenses, corrective lenses, optical corrective lenses, optical lenses, etc. ZEISS filed cancellation action on December 29, 2020, alleging the registration of “ZEISHI LOOK” violates, among the others, Article 30.1.10 of Trademark Law.

 

In its determination, TIPO sides with ZEISS based on the following:

1.    According to Article 30.1.10 of Trademark Law, a mark shall not be registered if such a mark is 1) 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.     As to similarity, although the contested trademark consists of two words: i.e., “ZEISHI” and “LOOK”, TIPO is of the view that “ZEISHI” constitutes the dominant portion, and would be used by the consumers to identify the source of service or goods. When comparing “ZEISHI” against “ZEISS”, TIPO finds they are visually and verbally similar to each other, as “ZEISHI” and “LOOK” share four identical letters.

3.     As to the designated use of goods, TIPO notes that both “ZEISHI LOOK” and “ZEISS” are applied for use in similar optical and eyewear products, such as glasses, glasses frames, lenses, etc. If similar trademarks are used, it is likely that consumers will be confused as to the source of these products.

4.      TIPO also finds “ZEISS” has reached the status of well-known trademark and consumers are more familiar with “ZEISS” after the continuous marketing and sale of the “ZEISS” branded products.

5.     In view of the similarity between the two trademarks, the facts that both trademarks are applied for use in similar eyewear products, that “ZEISS” is well-known, and that consumers are more familiar with “ZEISS”, TIPO is convinced that the registration of “ZEISHI LOOK” might cause confusion with “ZEISS” among the relevant consumers. Therefore, TIPO determines that the registration of “ZEISHI LOOK” should be canceled accordingly.      

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ejgza0RMRWp3Qll4VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true