Linkedin’s attempt to cancel Inline’s trademark “in” fell short

On April 15, 2022, social media giant Linkedin Corporation (“Linkedin”) filed trademark opposition against Inline Apps Limited (“Inline”), alleging registration of Inline’s trademark “in” should be canceled in view of likelihood of confusion with Linkedin’s famous trademark “IN” (no. 01478014, see below).

 

The contested trademark, “in” (no. 02197934, see below), was filed by Inline on June 22, 2021, and granted on January 16, 2022, designated for use in services under class 45, including private purchasing services, astrology services, wedding arrangement services, fashion trend information, etc. Linkedin argued that Inline’s “in” violated Article 30.1.11 of Trademark Act, because Inline’s trademark may cause confusion with Linkedin’s famous icon.

On December 11, 2023, Taiwan’s IP Office (“TIPO”) found for Inline, reasoning that:

 

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, 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. To be eligible for citing Article 30.1.11, the alleged trademark must be a well-known trademark.

2.    In this case, TIPO found the submitted evidence for trademark use insufficient to support the alleged well-known status of “IN”. Although Linkedin provided internet materials showing introduction of its service, records of online seminars, news coverages in magazines, and blog posts. However, TIPO found these materials either did not show use of “IN” or were produced after the filing date of Inline’s contested trademark. Among those supporting materials that did show use of Linkedin’s “IN”, TIPO found the volume and duration of use not enough to support a finding of well-known status. TIPO noted that there are around 2.5 million registered Linkedin users in Taiwan, but was unable to find any further information that could demonstrate how the trademark “IN” is being used and recognized among the users. As such, TIPO could not find Linkedin’s “IN” a well-known trademark.

3.    TIPO agreed with Linkedin that both trademarks, namely, Linkedin’s “IN” and Inline “in”, are similar with each other, and that both are distinctive for the designated goods and services. However, TIPO noted that Inline’s “in” is used in services that are quite different from those designated by Linkedin’s “IN”. Inline’s “in” is applied for use in services like purchasing and wedding arrangement services, but Linkedin’s “IN” is used primarily in social media services. TIPO also noted that there is no evidence suggesting Linkedin’s expansion of use of “IN” in other products or services.

4.      In view of the above, since there is insufficient evidence proving the well-known status of Linkedin’s “IN”, and no relevance between services designated by Linkedin’s “IN” and Inline’s “in”, TIPO found mere similarity between the two trademarks not enough to cause confusion among the relevant public. Besides, there is no evidence showing reputation or distinctiveness of Linkedin’s “IN” would be damaged due to the use of Inline’s “in” for providing the designated services. Hence, TIPO found no violation of Article 30.1.11 and sided with Inline accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUNDZHk1cmQ3aUN0dWtKVHFuSFVQUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true