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