TutorABC prevailed on remand, convincing the court that Jeda’s trademark “eTutor” would cause confusion with its “TutorABC” trademarks

On June 1, 2023, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) overturned determination previously made by Taiwan’s IP Office, finding the trademark “e Tutor” registered by the language learning institute Jeda would cause confusion with TutorABC Inc.’s famous trademarks “TutorABC” (Reg. No. 01281166, 01278886, 01636300, and 01278887), “TutorABC.com” (Reg. No. 01636299), “TutorABCjr” (Reg. No. 01467561), and “TutorMing” (Reg. No. 01355089).

Jeda’s contested trademark, “e Tutor” (Reg. No. 01758049), was filed on June 9, 2015, and granted on March 1, 2016, designated for use in services under class 41, including educational service, training service, vocational training, vocational counselling, consulting service, etc. TutorABC Inc. filed invalidation action on July 7, 2016, citing violation of Trademark Act.

On October 31, 2018, Taiwan’s IP Office (“TIPO”) found in Jeda’s favor, determining that due to the dissimilarity between “e Tutor” and TutorABC Inc.’s aforesaid trademarks, the aforementioned Trademark Act should not be applicable. TIPO agreed that TutorABC Inc.’s trademarks are famous trademarks, and that both parties’ trademarks are applied for use in similar educational services. However, TIPO was of the view that although both Jeda’s and TutorABC Inc.’s trademarks feature “tutor”, ordinary consumers still would not consider them similar with each other. More specifically, in Jeda’s “e Tutor”, the letter “e” is much bigger than the ordinary word “tutor”, and there is another ornamental cloud presented, which, when taking as a whole, could render Jeda’s contested trademark dissimilar with TutorABC Inc.’s cited trademarks.

 

TutorABC Inc. challenged TIPO’s determination in the IPC Court. In the first round, The IPC Court sided with TIPO, finding TutorABC Inc.’s similarity analysis flawed in that TutorABC Inc. inappropriately focused on the common word “tutor” shared by Jeda’s and its cited trademarks, while ignoring all the other presented elements. TutorABC Inc. appealed, and the Supreme Administrative Court (“SAC”) vacated IPC Court’s first ruling on October 27, 2022, determining that while there are variations in Jeda’s and TutorABC Inc.’s cited trademarks, the main impression formed in the consumers’ minds after seeing both parties’ trademarks would still be “tutor”. As such, the SAC posited that “e Tutor” should still be found similar with TutorABC Inc.’s aforesaid trademarks. The case was subsequently remanded back to the IPC Court for further handling in accordance with SAC’s instruction.

 

In its second ruling on June 1, 2023, the IPC Court sided with TutorABC Inc. This time, the IPC Court found TIPO’s determination erroneous.

1.      Although “tutor” is a word with ordinary meaning, such a word may still be distinctive. To this end, the IPC Court affirmed that both Jeda’s and TutorABC Inc.’s trademarks possess distinctiveness, and that TutorABC Inc.’s aforesaid trademarks have achieved the status of well-known trademarks.

2.      As to similarity analysis, the IPC Court followed the path directed by the SAC, considering “tutor” the dominant portion of Jeda’s contested trademark, which would be considered similar with TutorABC Inc.’s aforesaid famous trademarks by ordinary consumers.

3.      Given that TutorABC Inc.’s above trademarks are famous, that both Jeda and TutorABC Inc. provide similar language educational service, and that “e Tutor” is similar with “TutorABC”, the IPC Court concluded that Jeda’s contested trademark should be invalidated due to the likelihood of confusion caused by its similarity with TutorABC Inc.’s famous trademarks.

 

 

Source: 2023 Shin-Shang-Gan-Yi-No. 1 (IPC Court)

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,111%2c%e8%a1%8c%e5%95%86%e6%9b%b4%e4%b8%80%2c1%2c20230601%2c1

Fashion Giant LV Scores a Win for its famous trademark in opposition against “LN”

In an opposition proceeding initiated by Louis Vuitton Malletier (“LVM”), Taiwan’s IP Office (“TIPO”) found in LVM’s favor, canceling the trademark registration of “LN” for its similarity with the fashion giant’s famous brand “LV”.

 

The opposition was filed by LVM based on its famous trademark “LV” (See below). According to LVM, the registration of “LN” violates Article 30.1.11 of Trademark Act, which provides that a mark shall not be registered if such a mark is identical with or similar to another’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or harm to the reputation of the well-known trademark.

The contested trademark, “LN” (Reg. No. 02218417, see below), was filed by Lion Technology Co. Ltd. on July 16, 2021, and granted on May 1, 2022, designated for use in goods under class 11, including products such as water supplier, water purifier, water cleaning device, water sterilizer, electrolytic water generator, water purification, etc. LVM filed opposition against “LN” on July 25, 2022.

 On June 14, 2023, TIPO sided with LVM, finding that:

 

1.     Based on TIPO’s prior findings, LVM’s asserted trademarks “LV” indeed have been profoundly used by LVM on various kinds of products, including purses, watches, fashionable accessories, apparel, etc., and are well-recognized among the relevant consumers. As such, TIPO affirmed that LVM’s cited trademarks are “well-known” at the time when the contested trademark “LN” was filed for registration in 2021.

2.     TIPO also noted that the contested “LN” trademark composed of two partially overlapping English letters “L” and “N”, which demonstrates similar style and patter presented in LVM’s cited trademark. Although “LN” ends with “N” and “LV” ends with “V”, TIPO considers such difference minor. As such, “LN” is considered visually and conceptually similar with “LV”.

3.     As to the strength of trademark, TIPO again found this factor tilted to LVM’s favor. “LV” is not only a highly distinctive trademark, but has also been used on various kinds of products, including apparel, jewelry, detergents, bleaches, etc. Thus, TIPO is of the view that LVM’s aforesaid famous trademark has been applied for use in diverse products and services, and is likely to be used on products that are similar with or related to products designated by the contested trademark.

4.     In view of the above, since 1) LVM’s trademark is highly distinctive and famous among the relevant public; 2) the contested trademark “LN” is similar with “LV”; 3) the famous trademark “LV” has been used on numerous products that are commonly used in consumers’ daily lives, which are similar with or related to the products designated by the contested trademark “LN”, TIPO determines that the registration of “LN” may cause confusion with LVM’s famous trademark. 

 

In conclusion, the registration of “LN” is canceled by TIPO in accordance with Article 30.1.11 of Trademark Act. 

 

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4L3ZFN1RRT1drV25weE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true