Taiwan’s IP Office canceled “Volover” in view of similarity with “VOLVO” in trademark opposition

VOLVO TRADEMARK HOLDING AB (“VTH”) successfully convinced Taiwan’s IP Office (“TIPO”) in its opposition against trademark “Volover”, having the contested trademark canceled due to likelihood of confusion with its famous “VOLVO” trademarks (e.g., Reg. No. 01789958 and 01293880, see below).

 

The contested trademark “Volover” (see below) was filed for registration on November 30, 2020, and was granted on August 1, 2021 (Reg. No. 02156832), designated for use in goods under class 3, including cosmetics, body cleanser, face cream, lotion, body cream, skin whitening cream, lotion, cleanser, sunscreen, face mask, body gel, moisturizer, massage cream, essential oil, wrinkle cream, nutritional cream, etc. VTH filed opposition on October 29, 2021, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On December 30, 2022, TIPO found for VTH, determining that the registration of the contested trademark should be canceled due to violating at least Article 30.1.11 of Trademark Act.

 

1.    Article 30.1.11 of Trademark Act 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.    Here, TIPO firstly notes that the contested trademark “Volover” and VTH’s “VOLVO” both start with “V”, “O”, and “L”, followed by similar combination of letters “ov” and “VO” respectively. Considering the similar sequence and composition of these letters, TIPO opines “volover” and “VOLVO” are similar with each other.

3.    As to the status of “VOLVO”, after reviewing VTH’s supporting materials, such as market survey report, marketing material, and prior judicial finding made by Taiwan’s IP Court in 2013, TIPO is convinced that prior to the filing of the contested trademark in 2020, “VOLVO” as a trademark has been well-known in auto industry.

4.    Meanwhile, TIPO considers “VOLVO” highly distinctive, given that the meaning of such trademark is not related to the nature and function of product and service for which it is applied for use, and that “VOLVO” has been marketed and used by VTH for a very long time. In general, consumers are more familiar with “VOLVO”.

5.    Although the contested trademark is designated for use in cosmetic product, which is not the product field in which “VOLVO” enjoys its well-known status, TIPO finds “VOLVO” in fact has been put in use on diversified product lines, and VTH also acquired registration of “VOLVO” that is designated for use in products like perfume and fragrance. Thus, TIPO holds the view that the brand territory of “VOLVO” may expand to similar cosmetic product, and that consumers may be confused by registration of “Volover” due to its similarity with “VOLVO”.

 

Based on the reasoning above, considering that “Volover” is similar with “VOLVO”, that “VOLVO” is well-known and highly distinctive, and that consumers are more familiar with “VOLVO”, TIPO finds the registration of “Volover” is likely to caused confusion with VTH’s famous “VOLVO” trademark. Therefore, the contested trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bjhBT21aZDZlSVU0bEEvMDUreVhhUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Apple successfully canceled “HiTune” in view of similarity with its famous “iTunes” trademark

In a trademark opposition initiated by Apple Inc., Taiwan’s IP Office (“TIPO”) ruled in tech giant’s favor, finding the contested trademark “HiTune” confusingly similar with Apple’s famous “iTunes” trademarks (Reg. No. 01020430, 01716278, and 02076944, see below).

The contested trademark, “HiTune” (Reg. No. 02114569, see below), was filed for registration on August 18, 2020, and granted on January 16, 2021, designated for use in goods under class 9, including data processing equipment, random access memory, earphones, headphones, microphones, audio-video receivers, sound transmitters, battery chargers, cables, data readers, downloadable application software, sound recording apparatus, portable media players, tuning devices, network communication equipment, and wearable electronic devices. Apple filed opposition against the registration of “HiTune” on April 15, 2021, alleging violation of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO sided with the tech giant on November 28, 2022, finding:

1.    The contested trademark is similar with Apple’s cited “iTunes” trademarks. Although the initial letter of the contested trademark (i.e., “H”) is different from that of Apple’s cited trademarks (i.e., “i”), consumer’s overall visual impression of the contested trademark would still be “Tune”. Additionally, the pronunciation of “HiTune” is also similar with that of “iTunes”. TIPO therefore determines the contested trademark is verbally and visually similar with Apple’s cited trademarks.

2.    As to similarity of the designated goods, TIPO is of the view that Apple’s “iTunes” trademarks are applied for use in products like computer software, mobile phone, internet equipments, downloadable multimedia files, cpu, data processor, speaker, wearable device, etc., which are associated with the function of products designated by the contested trademark. For example, the designated applications and softwares of both trademarks could be used on computers and wearable devices. Hence, consumers may consider Apple’s “iTunes” and the contested “HiTune” are applied for use in similar products. 

3.    While TIPO recognizes that both Apple’s “iTunes” and the contested “HiTune” are distinctive in nature, TIPO, after reviewing the evidence of trademark use, finds there is no record that could support consumer’s familiarity with the contested trademark “HiTune”. In contrast, based on Apple’s supporting evidence, “iTunes” has become widely popular among the relevant public due to the success of Apple’s iPOD and iOS products. Therefore, Taiwan’s consumers are more familiar with Apple’s “iTunes” trademarks.

 

In view of the similarity between “HiTune” and “iTunes”, the similarity of the designated goods, the high distinctiveness of and consumer’s familiarity with  Apple’s “iTunes”, TIPO determines that the registration of “HiTune” may cause confusion with Apple’s “iTunes”. As such, registration of “HiTune” is canceled in accordance with Article 30.1.10 of Trademark Act.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c2hmYVlUcG9tMHBYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true