On April 27, 2023, Taiwan’s IP Office (“TIPO”) denied the opposition filed by LinkedIn Corporation (“LinkedIn”), finding LinkedIn’s mark (Reg. No. 0147814, see below) would not be confused or diluted due to the registration of No. 02187223 trademark.
LinkedIn alleges that its mark is famous as it is one of the most popular social media platforms, and has more than 740 million registered members from 150 different countries around the world. In Taiwan, LinkedIn registered trademark in as early as 2011, and such trademark has become well-known after LinkedIn’s continuous use in its social media service. LinkedIn argues that since the contested trademark and LinkedIn’s trademark both feature similar word “in”, the contested trademark is highly similar with LinkedIn’s trademark, and that registration of the contested trademark may cause confusion with LinkedIn’s famous trademark.
In its determination on April 27, 2023, TIPO sided with Inline, reasoning that:
1. Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is similar with other’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or reputation of the well-known trademark.
2. Indeed, both Inline’s trademark and LinkedIn’s trademark feature the word “in”, and both words “in” are embedded in color squares. The contested trademark is thus visually, conceptually, and verbally similar with Linkedin’s trademark.
3. As to the well-known status of LinkedIn’s trademark, the evidence submitted by Linkedin is insufficient to support a finding in its favor. While according to local news, there are around 2.5 million users registered in Taiwan, there is no data to support such figures. There indeed are news reports covering the popularity of LinkedIn, but LinkedIn’s trademark does not appear in every one of them. In addition, among the Taiwanese between the age of 25-29, only about 2% of them are using LinkedIn’s service. Thus, the evidence submitted by LinkedIn is insufficient to support its statement that its mark is well-known.
4. “in” is a common word with ordinary meaning. While such word is distinctive when being used in the field of financial or social media service, it is noted that LinkedIn’s trademark is primarily used for social media service, and less in goods and service under class 9, 35, 38, 41, 42, and 45. There is no record showing LinkedIn’s service has actually expanded to other areas.
5. Although Linkedin argues that Inline’s application is based on bad faith, records show that there are other registered trademarks in Taiwan that use similar word “in” as part of the trademark. Besides, there are still noticeable differences in terms of color and font style between Inline’s and LinkedIn’s trademarks. Based on the records at hand, TIPO does not consider Inline’s application was based on bad faith.
6. In view of the above, although Inline’s trademark is similar with LinkedIn’s trademark, the evidence submitted by LinkedIn is insufficient to show its trademark is famous among the relevant public. Further, the goods and services designated by LinkedIn’s trademark are different from and unrelated to those designated by the contested trademark, and there is no record showing LinkedIn has expanded its business to service that is similar with or related to Inline’s designated services. Registration of Inline’s contested trademark would not cause confusion with LinkedIn’s trademark. Furthermore, there is no evidence indicating Inline’s use of the contested trademark is based on bad faith or would damage or dilute the distinctiveness of Linkedin’s trademark. Registration of Inline’s contested trademark does not violate Article 30.1.11 of Trademark Act. Hence, LinkedIn’s opposition against Inline should be denied accordingly.
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