APPLE prevailed in trademark opposition for its famous apple logo

On January 19, 2023, Taiwan’s IP Office (“TIPO”) sided with APPLE INC. (“APPLE”), finding the registration of a mark filed by ORANGE TECHNIC CO., LTD. (“ORANGE”) may cause confusion with the tech giant’s famous apple logo (e.g., Reg. No. 01089047, 00223846, 01620273, 00188598, and 00012763, see below).

 
The contested trademark, “O.T.” (Reg. No. 02194372, see below), was filed by ORANGE on April 19, 2021, and granted for registration on January 1, 2022, designated for use in service under class 42, including platform as a service (PaaS), building and maintaining websites, software as a service (SaaS), cloud computing, information technology consulting, development of computer platforms, computer system design, computer Software design, consulting on computer hardware design and development, programming, data processing, website planning and construction, network security management services, network security consulting, etc.

APPLE filed opposition against ORANGE on March 29, 2022, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

In its determination made on January 19, 2023, TIPO found the registration of the contested trademark has violated Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark shall 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.

2.    On similarity, TIPO’s focus is on the red circular body and the oval leaf, which TIPO believes would form a visual impression of a red fruit with a separated oval leaf. Although there is no other element suggesting “what kind of fruit” is presented in the contested trademark, TIPO considers it would be easy for ordinary consumers to figure that a red apple is presented. As such, TIPO opines the contested trademark is conceptually and visually similar with APPLE’s cited trademark. The degree of similarity should be medium.

3.    As to the similarity of the designated services, TIPO finds APPLE’s cited trademarks are also applied for use in various kinds of products and services, such as computer software, computer hardware, server, software design, information communication technology, website design, intranet service, internet service, etc. TIPO finds these products and services are related to or associated with the services designated by the contested trademark, for they are usually used or sold in conjunction with each other, and solve similar need for consumers.

4.    According to the supporting evidence submitted by APPLE, including prior court decisions and TIPO’s prior determinations, it is clear from TIPO’s standpoint that APPLE’s logo has established strong recognizability among the consumers, and TIPO views such high distinctiveness warrants a more favorable consideration when evaluating likelihood of confusion.

 

Based on the above, in light of the medium degree of similarity between APPLE’s cited trademarks and the contested trademark, the similarity of the designated services, the high distinctiveness of APPLE’s trademarks, and the fact that consumers are more familiar with APPLE’s trademarks, TIPO concluded that registration of the contested trademark may cause confusion among the relevant consumers. Thus, TIPO determines that the contested trademark should be canceled in accordance with Article 30.1.10 of Trademark Act.  

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SXJEaUJwQjZSNTdETXFVNktzdnJCdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Cosmetics giant L’OREAL successful in opposition proceeding against ‘Joereal’ on ground of likelihood of confusion

On January 13, 2023, Taiwan’s IP Office (“TIPO”) found trademark “Joereal” should be canceled in view of likelihood of confusion with senior trademarks “L’OREAL” (Reg. No. 00293516, 00313008, 00321107, 00323205, and 02132673, together as “L’OREAL”, see below) held by the French beauty giant L'OREAL, S.A.

 

The canceled trademark, “Joereal” (Reg. No. 02156922, see below), was filed on January 22, 2021, and granted for registration on August 1, 2021. “Joereal” was applied for use in goods in class 3, including cosmetics, collagen preparations for cosmetic use, creams for whitening skin, masks, face creams, skin care products, skin care lotions, makeup removers, shampoos, hair care products, cleanser for human body, soap, mouthwash, etc. L'OREAL, S.A. filed opposition against “Joereal” on October 29, 2021, alleging violation of, among the others, Article 30.1.10 of Trademark Act.

 

TIPO sides with L'OREAL, S.A. in its determination of January 13, 2023:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is “being 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”.

2.      On similarity of trademark, TIPO holds the view that while “Joeoreal” is slightly different from “L’OREAL” in its composition of characters, the pronunciation of “Joereal” is similar with that of “L’OREAL”. TIPO agrees with L'OREAL, S.A. and finds there should be medium degree of similarity between “Joereal” and “L’OREAL”.

3.      As to the designated use of goods, TIPO finds that trademark “L’OREAL” is not only applied for use in various kinds of cosmetics such as perfume, lipstick, eyeshadow, eyeliner, etc., but also body cleansers including bath gel, lotion, body powder, shampoo, soap, conditioner, etc. As such, TIPO considers “Joereal” and “L’OREAL” are applied for use in similar goods. They serve similar or related functions, and are usually sold to consumers via similar channels. The degree of similarity is high.

4.      Based on the report of internet search result, trademark search report, and report of Wikipedia, TIPO finds the records submitted by L'OREAL, S.A. sufficient to prove that “L’OREAL” has been widely used on numerous makeup and cosmetics, and has established popularity and recognizability among the relevant consumers. In comparison, TIPO finds there is little record supporting the distinctiveness of “Joereal”. Hence, on the determination of distinctiveness, TIPO finds such factor tips to the favor of L'OREAL, S.A.

   

In view of the above, given that there is medium degree of similarity between “L’OREAL” and “Joereal”, that the designated products of “Joereal” are highly similar with and related to those designated by “L’OREAL”, and that “L’OREAL” is highly distinctive and more recognizable by the consumers, TIPO concludes that the registration of “Joereal” may cause confusion among the relevant consumers due to its similarity with “L’OREAL”. As a result, registration of “Joereal” is canceled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cm1uYU5hallWUmV4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true