Taiwan’s IP Office found using “Grammy” on building materials may dilute the distinctiveness of Recording Academy’s famous trademark “GRAMMY RECORDINGS”

National Academy of Recording Arts & Sciences, Inc., (the “Academy”) the registrant of No. 01292235 trademark (See below) in Taiwan, filed opposition against KUEN YEU ENTERPRISE CO., LTD. (“KYE”) on December 15, 2021. The Academy contended that the registration of KYE’s trademark should be canceled for violating, among the others, Article 30.1.11, of Trademark Act.

 

KYE’s contested trademark (Reg. No. 02168865, see below) was filed for registration on November 16, 2020, and granted on September 16, 2021, designated for use in goods under class 19, including various kinds of building materials like water-proof boards, moisture-proof wood boards, and fire-resistant wood boards. Taiwan’s IP Office (“TIPO”) entered decision on February 24, 2023, finding registration of KYE’s trademark shall be canceled.

 

TIPO’s reasonings are as follows:

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.    “GRAMMY RECORDINGS” is distinctive and has been well-known due to the Academy’s renowned musical award ceremony, which has been made popular and highly recognizable among the relevant public in Taiwan. The Academy also submitted numerous court’s decisions and prior determinations made by TIPO itself to support the well-known status of “GRAMMY RECORDINGS”, and TIPO finds them convincing. Thus, TIPO sides with Academy by affirming “GRAMMY RECORDINGS” is well-known to the relevant public.

3.    As to similarity, both KYE’s contested trademark and Academy’s “GRAMMY RECORDINGS” feature the word “Grammy”, and TIPO considers “Grammy” constitutes the dominant portion of the two trademarks. As such, KYE’s contested trademark and Academy’s “GRAMMY RECORDINGS” are considered highly similar with each other.

4.    The word “GRAMMY” has no ordinary meaning, and has developed unique connection with Academy and its musical award. Upon seeing the word “GRAMMY”, the general public would immediately recognize the relevant awards presented by the Academy for the musical industry. Further, TIPO notes that registering “GRAMMY” as trademark is quite rare in Taiwan, and that the records show that all the registered trademarks containing the word “GRAMMY” are owned by the Academy, except for the one registered by KYE. Thus, TIPO posits that “GRAMMY RECORDINGS” is highly distinctive and should be awarded with greater protection when weighing against KYE’s contested trademark.

5.    In view of the above, although the designated products of KYE’s trademark are different from those designated by the Academy, the unique capacity for Academy’s well-known “GRAMMY RECORDINGS” to signify single source of goods or services may be harmed due to the high similarity between Academy’s and KYE’s trademarks. As such, TIPO determines that registration of KYE’s trademark may cause dilution to the distinctiveness of Academy’s well-known trademark, and that the contested trademark should be canceled accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4d09oODl4RXdqTk1mbE1yU3BvM3Fxdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Fashion brand “JIMMY CHOO” successful in trademark opposition against Korean Brand “CHUU”

In a trademark opposition initiated by J. CHOO LIMITED (“J. CHOO”) against Korean brand “CHUU”, Taiwan’s IP Office (“TIPO”) sided with J. CHOO, finding “CHUU” should be canceled due to likelihood of confusion with J. CHOO’s registered trademarks “CHOO” (Reg. No. 01661633, 01888397, 02003379, 01539950, and 01744963, see below).

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“CHUU”, a trademark held by Korean brand PPB STUDIOS CO. (“PPB”), was filed for registration on January 8, 2020, and granted on December 1, 2020 (Reg. No. 02104604, see below), designated for use in goods under class 25, including vests, sweaters, shirts, t-shirt, suits, trousers, coats, jackets, garments, shoes, scarves, socks, gloves, belts, etc. J. CHOO filed opposition on February 25, 2021, citing, among the others, violation of Article 30.1.10 of Trademark Law.

 

TIPO ruled in favor of J. CHOO on February 9, 2023, reasoning that:

1.      Article 30.1.10 of Trademark Law 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.      Here, TIPO finds the contested trademark “CHUU” similar with the cited “CHOO” in that both start with “CH”, and the last two letters “UU” resemble “OO” in its visual impression. In its entirety, TIPO consider “CHUU” visually and verbally similar with “CHOO”.

3.      As to the designated goods, both J. CHOO’s cited trademarks and PPB’s contested trademark are put in use on apparel, clothing, and the related accessories. These products are identical to or similar with each other in their nature, so TIPO considers the degree of similarity is high.

4.      The brand “JIMMY CHOO” is originated from the name of J. CHOO’s founding designer, and is not related to the nature or function of the designated products. In addition, TIPO finds J. CHOO’s cited trademarks distinctive, and highly popular within the relevant consumers after years of successful marketing and branding around the globe. Consumers in Taiwan are more familiar with “CHOO”.

5.      Although there is evidence showing the Korean brand “CHUU” has also been used on various kinds of apparel and known by consumers in Taiwan since 2014, TIPO considers such evidence, when comparing against the voluminous evidence of trademark use of “CHOO”, is insufficient to show “CHUU” is famous enough so that consumers in Taiwan could distinguish “CHOO” from “CHUU”.

 

In view of the above, given that “CHUU” is similar with “CHOO”, that both trademarks are designated for use in highly similar products, that “CHOO” is distinctive and more famous and known by the relevant consumers, TIPO is convinced that the registration of “CHUU” may cause confusion with J. CHOO’s “CHOO”. As such, PPB’s trademark “CHUU” is canceled accordingly.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dzJNejUvQkdKZWo0dm83YWNqNlhnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true