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.
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