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:
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