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