Jaguar’s opposition against “DISCOVERY JUNIOR” falls short

On September 12, 2023, Taiwan’s IP Office (“TIPO”) denied opposition filed by JAGUAR LAND ROVER LIMITED (“JAGUAR”), finding JAGUAR’s trademarks “DISCOVERY” (reg. no. 01755441 and no. 01728494, see below) would not be confused by the registration of “DISCOVERY JUNIOR”, the contested trademark held by DISCOVERY KIDS ENTERTAINMENT LIMITED (“DISCOVERY KIDS”), a subsidiary of DISCOVERY COMMUNICATIONS, LLC.

The contested trademark, “DISCOVERY JUNIOR” (reg. no. 02171192, see below), was filed on September 23, 2020, and granted on September 16, 2021, designated for use in various kinds of goods and services under class 9 (such as camera, downloadable visual files, smart watch, smart glasses, downloadable mobile applications, robot with artificial intelligence, etc.), class 25 (such as apparel, costumes, socks, scarfs, shoes, etc.), class 28 (such as toy figures, puzzles, DIY toy sets, dolls, etc.) , and class 41 (such as educational service, educational information, book publishing, film production, etc.) JAGUAR filed opposition against the registration of “DISCOVERY JUNIOR” on December 10, 2021, alleging that the registration of “DISCOVERY JUNIOR” for class 28 violates Article 30.1.10 and 30.1.11 of Trademark Act.

 

 In its determination entered on September 12, 2023, TIPO sided with DISCOVERY KIDS:

1.      According to Trademark Act, a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers (Article 30.1.10). Additionally, a mark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark, 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 (Article 30.1.11).

2.      “Discovery” is a word with ordinary meaning, and records show that it has been registered as trademark by others in similar class of goods before the registration date of JAGUAR’s asserted trademark. Generally, TIPO considers both “DISCOVERY JUNIOR” and “DISCOVERY” distinctive and could be used as signs to identify the source of products or services provided.

3.      Based on the records of use of trademark, including the successful sales of JAGUAR’s “DISCOVERY” RV series, the continuous media exposure, the operation of HQ and service network in Taiwan, and the strong support from the community of “DISCOVERY” RV owners, TIPO confirms that JAGUAR’s “DISCOVERY” has become famous in the field of automobile products in Taiwan.

4.      On similarity, “DISCOVERY” is included in both “DISCOVERY” and “DISCOVERY JUNIOR”, but the word “DISCOVERY” is a common vocabulary with ordinary meaning, with which consumers are already familiar. Besides, the word “DISCOVERY JUNIOR” carries the meaning of “young explorer”, but “DISCOVERY” simply means “exploration”. The meanings of the two trademarks are thus noticeably different. Further, the visual appearance and pronunciation of the two trademarks are also different. TIPO opines the degree of similarity between “DISCOVERY” and “DISCOVERY JUNIOR” is, at most, medium.

5.      TIPO agrees that both “DISCOVERY” and “DISCOVERY JUNIOR” are applied for use on similar goods under class 28. However, TIPO found no records that could support the finding that JAGUAR’s “DISCOVERY” has been used and become famous in the field of toy products prior to the filing date of “DISCOVERY JUNIOR”. Plus, there is no evidence showing JAGUAR has used “DISCOVERY” in developing other product line. It is uncertain that in toy market consumers would be more familiar with JAGUAR’s “DISCOVERY” than DISCOVERY KIDS’ “DISCOVERY JUNIOR”  

6.      In view of the above, in terms of Article 30.1.10, TIPO concludes that although JAGUAR’s “DISCOVERY” and DISCOVERY KIDS’ “DISCOVERY JUNIOR” are applied for use in the same class of goods, consumers should be well-educated enough to discern JAGUAR’s “DISCOVERY” from DISCOVERY KIDS’ “DISCOVERY JUNIOR” because the word “DISCOVERY” has been commonly used by other registered trademarks in the same class of goods. Based on the visual, conceptual, and verbal differences, TIPO finds there should be no likelihood of confusion between JAGUAR’s “DISCOVERY” and DISCOVERY KIDS’ “DISCOVERY JUNIOR”.

7.      In terms of Article 30.1.11, TIPO opines that while JAGUAR’s “DISCOVERY” is famous in the field of automobile industry, there is no sign showing JAGUAR has put “DISCOVERY” in use on toy or other types of products. On the other hand, TIPO notes that evidence shows that “DISCOVERY” as trademark has been widely used by other companies, and there are various kinds of trademarks featuring “discovery” that have coexisted with each other across various types of products and services in Taiwan. Thus, consumers should be able to discern the source of goods and services when faced with trademarks featuring the word “discovery”. As JAGUAR produced no evidence proving DISCOVERY KIDs’ bad faith in mimicking JAGUAR’s famous trademark or actual confusion has been caused due to the registration of the contested trademark, TIPO determines that the registration of “DISCOVERY JUNIOR” will not dilute or harm the distinctiveness or reputation of JAGUAR’s “DISCOVERY” trademark.

 

Based on the reasons above, JAGUAR’s opposition against “DISCOVERY JUNIOR” is denied accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZTQ4aXVoNDRkVlV6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true