Taiwan’s IP Office finds no confusion between “KAIKAI” and “KOOKAI”

On June 18, 2021, KOOKAI ENTERPRISES UK LIMITED (“KOOKAI”) filed opposition against trademark “KAIKAI”, contending that the registration of “KAIKAI” would cause confusion with its famous “KOOKAI” brand (Reg. No. 00440618 and 00658854, see below).

The contested trademark, “KAIKAI” (Reg. No. 02127787, see below), was filed on September 21, 2020, and granted on March 16, 2021, designated for use in goods under class 25, including T-shirts, sweaters, coats, shoes, underwear, scarves, socks, gloves, etc.

 KOOKAI argues that registration of “KAIKAI” violates Article 30.1.10 and 30.1.11 of Trademark Act, which provides that a mark should not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers” (Article 30.1.10); or 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” (Article 30.1.11).

 

In its determination on August 15, 2022, TIPO sided with “KAIKAI”, finding “KAIKAI” not confusingly similar with the famous “KOOKAI” trademark:

 

1.      TIPO affirms that “KOOKAI” is a well-known trademark in the field of clothing after being continuously used and marketed for more than 38 years across multiple countries. It is undeniable that at the time “KAIKAI” was filed for trademark application, “KOOKAI” has achieved the status of well-known trademark in the field of clothing.

2.      As to similarity, TIPO finds the first three letters presented in “KOOKAI” and “KAIKAI” are different, which renders “KAIKAI” visually and verbally different from “KOOKAI”. In its entirety, TIPO holds the view that the similarity between “KOOKAI” and “KAIKAI” is low.

3.      As to similarity of use of products, TIPO notes that both “KOOKAI” and “KAIKAI” are applied for use in clothing and footwears, so they are used in related or associated products that serve similar function or purpose.

4.      TIPO further notes that both “KOOKAI” and “KAIKAI” have no specific meaning, so they are both distinctive when being designated for use in apparel and footwear products.

5.      For KOOKAI’s contention based on Article 30.1.11, TIPO opines that although “KOOKAI” is well-known, its low degree of similarity with “KAIKAI” and the fact that both “KOOKAI” and “KAIKAI” possess considerable distinctiveness make “KAIKAI” less likely to cause damages to distinctiveness or reputation of “KOOKAI”.

6.      For KOOKAI’s contention based on Article 30.1.10, TIPO again does not side with KOOKAI, finding the dissimilarity between “KAIKAI” and “KOOKAI” and the fact that both “KAIKAI” and “KOOKAI” are distinctive render “KAIKAI” distinguishable from “KOOKAI” among the ordinary consumers. Thus, there should be no confusion caused by registration of “KAIKAI”.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z044ZnRnbkNLZjNidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true