In its determination on March 31, 2023, Taiwan’s IP Office (“TIPO”) sided with GENERAL ELECTRIC COMPANY (“GE”), finding “GREEN ELITE GE” should be canceled due to likelihood of confusion with GE’s famous trademarks (Reg. No. 00001021,00009344,00066010,00120997,00124108,00124109,00981983,01334183,01334187, see below).
The
contested trademark, “GREEN ELITE GE” (Reg. No. 02143427, see below), was filed
for registration on November 25, 2020, and granted on June 1, 2021, designated
for use in goods under class 5, including nutritional
supplements, vitamin preparations, food therapy products for medical use, human
medicines, traditional Chinese medicines, pesticides, breast pads, freeze-dried
food for medical use, medicated soap, medicated oral cleanser, healing candle
massage oil, etc. GE filed opposition on August 27, 2021, citing violation of,
among the others, Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.
TIPO
found in favor of GE, confirming the registration of the contested trademark may
cause confusion with GE’s aforesaid famous trademarks:
1.
According
to Article 30.1.11 of Trademark Act, a mark shall not be registered if such
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.
On
whether GE’s trademarks are well-known, TIPO confirms that GE has produced sufficient
evidence to support its contention that its trademarks are famous among the general
public. Starting from 1950, GE’s products have been adopted and used in a
variety of Taiwan’s basic infrastructures. From the illuminating facilities for
highway, airport, and railroad systems, to the daily commodities that support countless
Taiwan’s households and families, image of GE’s brand has been deeply planted in
Taiwanese’s minds, and the general public is familiar with the ”GE” trademarks.
3.
On
similarity, TIPO notes that the contested trademark “GREEN ELITE GE” and GE’s
cited trademarks “GE” all share the common English letters “G” and “E”, and opines
that “GE” and “GREEN ELITE GE” are visually and orally similar with each other.
As such, ordinary consumers may find the source of the goods supplied under “GREEN
ELITE GE” is the same as or related to the source of the goods supplied under “GE”.
4.
On
distinctiveness, TIPO sides with GE and finds that GE’s famous trademarks are
more recognizable than “GREEN ELITE GE” and are highly distinctive among the general
public in Taiwan. Ordinary consumers are more familiar with GE’s aforesaid
famous trademarks.
5.
Further,
GE’s product lines are highly diverse. Over the past couple of years, GE’s
product territories have expanded from appliances and medical devices to
products like disinfectants and diagnostic reagents. Thus, it is likely that GE
may enter product field that is similar with or related to that as designated
by the contested trademark.
6.
In
view of the well-known status of “GE” trademarks, the similarity between “GE”
and “GREEN ELITE GE”, the fact that “GE” is highly distinctive and consumers
are more familiar with “GE”, and that based on GE’s diverse product lines, GE
is likely to supply products that are associated with or related to those as
designated by “GREEN ELITE GE”, TIPO determines that the registration of “GREEN
ELITE GE” may cause confusion with GE’s famous trademarks in the relevant
consumers. As such, the contested trademark should be canceled accordingly.
Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U0hVYzhtSGc4RlhReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true
