DAINESE prevailed in trademark opposition for its “TCX” trademark

In its determination made on May 30, 2023, Taiwan’s IP Office (“TIPO”) sided with Italian prominent brand DAINESE S.P.A. (“DAINESE”), finding DAINESE’s registered “TCX” trademark (see below) will be confused due to registration of “TCXX” trademark.

The contested trademark, “TCXX” (see below), was filed on February 7, 2021, and granted on August 1, 2021 (Reg. No. 02158378), designated for use in goods under class 25, including socks, boots, shirts, sweaters, pants, jackets, etc. DAINESE filed opposition on November 1, 2021, alleging that registration of “TCXX” violates Article 30.1.10, Article 30.1.11, and Article 30.1.12 of Trademark Act.

 

TIPO found in DAINESE’s favor on May 30, 2023, determining that the registration of “TCXX” should be canceled according to Article 30.1.10 of Trademark Act.

 

1.    Article 30.1.10 of Trademark Act provides that a mark should not be registered if such a mark is identical with or similar to other’s registered trademark; is applied for use in goods or services that are identical with or similar to those for which other’s registered trademark is applied; and hence there exists likelihood of confusion among the relevant consumers.

2.    As to similarity, TIPO noted that although DANIESE’s “TCX” is stylized and has different font size, ordinary consumers could still easily identify it as word consisting of “T”, “C”, and “X”, which is visually and conceptually similar with the contested trademark “TCXX”. The degree of similarity is very high.

3.    TIPO further noted that DAINESE’s “TCX” is designated for use in similar goods, such as slippers, sneakers, sportswear, coats, jackets, etc., which are products that could keep warm and be used in combination with other apparel and related accessories. Thus, TIPO considered both “TCX” and “TCXX” trademarks are applied for use in similar goods.

4.    Based on the records, DENIESE’s “TCX” is distinctive, has been registered in Taiwan since 2007, and is well-recognized among the relevant consumers through DENIESE’s continuous marketing and local distributorship. Since there is no record submitted to support the use of “TCXX”, TIPO found consumers should be more familiar with DENIESE’s “TCX”. 

5.    Given that ”TCXX” is highly similar with “TCX”, that both trademarks are applied for use in similar goods, that “TCX” is distinctive and that consumers are more familiar with “TCX”, TIPO concluded that registration of “TCXX” may cause confusion with DENIESE’s registered “TCX” among the relevant consumers. The registration of “TCXX” is therefore canceled in view of Article 30.1.10 of Trademark Act accordingly. 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Rk94aXpSclN1MDQ0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Tattoo Artists Found Guilty For Using Others’ Copyrighted Works

In a decision rendered on May 17, 2023, Taipei District Court held two tattoo artists liable for copyright infringement by using copyrighted artwork to create tattoo for their customers.

According to the complainants, who are also tattoo artists, the Mandala and flower designs (see below) are all creative artworks that are eligible for copyright protection.

 

The complainants alleged that defendants’ tattoos (see below) are illegal copies created by using the complainants’ aforesaid copyrighted artworks.

 

The defendants contended that the Mandala and flower artworks alleged by the complainants are all natural forms that are too common to be protected as copyrighted work. In addition, the defendants denied any contact with complainant’s works, and argued that the defendants’ tattoos are substantially different from complainants’ works. 

Taipei District Court found for the complainants, reasoning that:

1.    The threshold for copyright protection is not as high as that for patent. The work need not be novel. Instead, a minimum degree of creativity that could reflect the author’s originality would be sufficient.

2.    While Mandala illustrations usually demonstrate similar pattern, i.e., drawn from the central point and surrounded by symbols or decorations that are connected and interrelated, the choice of pattern, color, and configuration may vary, and could demonstrate an artist’s creativity. Similarly, artworks featuring natural forms like flowers may also be eligible for copyright protection, for the style, color, and overall composition of the flower, its pistil, and petal could demonstrate the author’s originality. Here, the Court finds the complainants’ artworks demonstrate sufficient creativity that render the Mandala and flower designs eligible for copyright protection.

3.    As to access of artwork, the Court reasons that while there is no evidence showing direct contact, the facts that both complainants and defendants are tattoo artists, and that both the defendants and complainants would share their tattoo works on social medial like Instagram and Facebook, justify an inference that it is likely that defendants may access complainants artwork via their social media networks.

4.    As to similarity analysis, the Court agrees with the expert’s opinion, finding that the defendants’ tattoos are derivative works based on complainants’ copyrighted artworks. Under the “total-concept-and-feel” test, while there are some differences between defendants’ tattoos and complainants’ artworks, the similarity between defendants’ and complainants’ works is still so high that the Court finds it difficult to believe it is based on defendants’ independent authorship, not copying.

5.    Based on the forgoing reasons, the Court is convinced that the defendants violate Copyright Act by, without complainants’ license, creating derivative works based on complainants’ copyrighted artworks.   

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=TPDM,111%2c%e6%99%ba%e6%98%93%2c27%2c20230517%2c1  

“TeaTok” v. “TikTok”

TIKTOK LTD. (“TIKTOK”), the trademark holder of “TikTok” in Taiwan, prevailed in its opposition against CJ FOOD AND BEVERAGE BEIJING COMPANY LIMITED (“CJ FOOD”), convincing Taiwan’s IP Office (“TIPO”) that consumers would confuse TIKTOK’s famous trademark “TikTok” (see below) with CJ FOOD’s registration of “TeaTok”.

 

CJ FOOD’s trademark, i.e., the contested trademark, “TeaTok” (Reg. No. 02184656, see below), was filed for registration on May 4, 2021, and granted on November 16, 2021, designated for use in various services under class 35 (including marketing, advertising, providing information or consultation for consumer’s purchase of goods or services, advertising on computer network, etc.) and class 43 (including coffee shop, tea shop, ice cream shop, fast food restaurant, etc.). TIKTOK filed opposition against CJ FOOD on February 10, 2022, citing violation of, among the others, Article 30.1.11 of Trademark Act.

 

TIPO ruled in TIKTOK’s favor on May 11, 2023, finding registration of “TeaTok” would cause confusion among the relevant public due to its similarity with “TikTok”:

1.    To begin with, 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.    In this case, TIPO affirmed that “TikTok” as a trademark has achieved the well-known status, given the worldwide popularity of the short-form video platform and its staggering number of monthly active users around the globe (more than 1 billion ). In fact, in its prior determinations, TIPO had agreed that “TikTok” is well-known for social media service.

3.    TIPO also found “TeaTok” visually and verbally similar with “TikTok”, and noted that “TikTok” is highly distinctive and has been used in various kinds of services. For example, by partnering with Shopify in 2021, TIKTOK developed in-app purchase services, making one step further into the market of e-commerce. Users could purchase clothing and other products at TikTok Store. In 2020, by teaming up with POSTMATES, TIKTOK delivered service “TIKTOK TREATS”, in which products like cereal, coffee, and Bento box were available.

4.    In view of the above, although CJ FOOD’s “TeaTok” is designated for use in services like advertising, marketing (class 35) and restaurant (class 43), TIPO found these services are associated with or related to the e-commerce and food delivery service provided by TIKTOK. As such, the relevant consumers may be confused by CJ FOOD’s “TeaTok” due to its high similarity with TIKTOK’s famous “TikTok”.

 

Based on the aforesaid reasons, TIPO determined that CJ FOOD’s “TeaTok” should be canceled in accordance with Article 30.1.11 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4b1ZWSDBaeW9PNmVZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true