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.
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