“CSI: CRIME SCENE INVESTIGATION”, sometimes referred to as “CSI”, is a popular American crime TV drama that was aired on CBS network in September of 2000, and has gained worldwide popularity since then. In Taiwan, the TV series is not only phenomenal, its title “CSI: CRIME SCENE INVESTIGATION” was also registered as trademark by DALTREY FUNDING LP (“Daltrey”), a CBS’s affiliate, in as early as 2004, and Daltrey has acquired series of trademark registrations for “CSI” over the years (Reg. No. 01091769, 02030444, and 02048892, see below, together referred to as “CSI”).
The contested trademark, “CSI TAIWAN CRIME SCENE
INVESTIGATION” (Reg. No. 02052756, see below), was filed on January 25, 2018,
and granted on April 16, 2020, designated for use in goods under class 9,
including devices like computer
hardware, computer software, laboratory instruments, magnifying glasses,
microscopes, telescopes, imaging and sound transmission equipment,
spectrometers, chemical devices, chemical instruments, physical devices,
physical instruments , observation instrument, etc. Daltrey filed opposition on
July 16, 2020, citing violation of Article 30.1.11 of Trademark Law.
After reviewing Daltrey’s opposition and
the responses of owner of the contested trademark, Taiwan’s IP Office (“TIPO”)
sided with Daltrey on August 31, 2022, finding registration of the contested
trademark would cause confusion with the famous CSI trademarks:
1)
Article 30.1.11 of Trademark
Law provides that a trademark shall not be registered if such a mark is “being
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)
As to CSI’s status as being well-known,
TIPO finds for Daltrey, considering the cited CSI trademarks have become well-known
after continuous and profound marketing and promotion of the TV series,
including the broadcasting on TV channel (AXN), the streaming via platform such
as Netflix, and the mass media exposure over the years.
3)
TIPO also notes that both the contested
trademark and the cited CSI trademarks present “CSI” and “Crime Scene Investigation”,
which makes the contested trademark conceptually and visually similar with
Daltrey’s famous trademarks.
4)
Although “Crime Scene Investigation”
is descriptive, “CSI” is a combination of the initials of “Crime Scene Investigation”,
and thus demonstrates considerable distinctiveness. Such unique combination of
initials, when being used in products and services like DVD or drama production,
could be distinctive.
5)
In addition to TV drama, the
cited CSI trademarks have been used in diverse merchandise, such as books, games,
etc. There is no doubt that consumers would be more familiar with Daltrey’s CSI
trademarks than the contested trademark. Further, one popular theme of the successful
TV series has been forensic investigation, which needs to use various kinds of
observation instruments and lab tools. The use of these devices in the “CSI” TV
series has formed strong impression among the consumers. When using the contested
trademark on these devices, it is likely that consumers may be confused and
misunderstand the origin or relationship of the services or products represented
by these two trademarks.
In view of the well-known status of “CSI”
trademarks, the similarity between the contested trademark and the cited CSI
trademarks, consumer’s high familiarity with the CSI trademarks, and the fact
that the contested trademark is used in related products, TIPO determines that the
registration of the contested trademark may cause confusion with Daltrey’s
famous “CSI” trademark. As such, the registration of “CSI TAIWAN CRIME SCENE
INVESTIGATION” is canceled accordingly.
Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUwzcXpWMkRTZi9iZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true
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