On October 4, 2023, Taiwan’s IP Office (“TIPO”) canceled trademark “USRAM” in view of similarity with OSRAM GMBH’s (“OG”) well-known trademark “OSRAM” (no. 01270503 and 01172285, see below).
The
contested trademark, “USRAM” (no. 02227904, see below), was filed by Etron
Technology Inc. (“Etron”) on December 8, 2021, and granted on June 16, 2022, designated
for use in goods under class 9, including computer, random access memory, face
recognition device, microchip, portable flash memory, wafer, semiconductor
device, integrated circuit board, microcircuit, etc. OG filed opposition on
August 30, 2022, alleging that registration of Etron’s “USRAM” violates Article
30.1.10 and 30.1.11 of Trademark Act.
In
its determination rendered on October 4, 2023, TIPO sided with OG, finding
registration of “USRAM” violates at least Article 30.1.11 of Trademark Act:
1.
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.
On
the status of well-known trademark, TIPO finds in OG’s favor in view of the
brand’s long history, its continuous sale and marketing in Taiwan, and TIPO’s
prior determination made in 2014 finding “OSRAM” a famous trademark among the
relevant consumers. Based on the profound and continuous use of “OSRAM”, TIPO affirms
that at the time Etron filed its application for “USRAM”, OG’s “OSRAM” is a
well-known trademark among the relevant consumers in Taiwan.
3.
In
terms of similarity, TIPO posits that Etron’s “USRAM” is similar with OG’s “OSRAM”
for both trademarks end with the same English letters “SRAM”. The difference created
by the initial letters (“U” v. “O”) is minor, because the shape of “U” is
somewhat similar with “O”. As such, TIPO considers Etron’s “USRAM” visually and
orally similar with OG’s “OSRAM”.
4.
Further,
TIPO finds OG’s “OSRAM” more famous and distinctive among the relevant public,
as “OSRAM” as a lighting brand has been registered and used as trademark since
as early as 1962 in Taiwan. To the contrary, there is no evidence of trademark use
submitted by Etron to support its distinctiveness and recognizability. Thus, TIPO
concludes that consumers are more familiar with OG’s “OSRAM” than Etron’s “USRAM”.
5.
In
view of the above, given that Etron’s “USRAM” is similar with OG’s “OSRAM”,
that OG’s “OSRAM” is more distinctive and well-known among the relevant public,
and that OG has expanded its brand territory from lighting solution to optical semiconductor
products, TIPO determines that registration of Etron’s “USRAM” may cause confusion
with OG’s famous trademark “OSRAM.” Hence, Etron’s “USRAM” is canceled accordingly.
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