On
February 17, 2024, Taiwan’s IP Office (“TIPO”) sided with TAIPEI FINANCIAL
CENTER CORP. (“TFC”) in its trademark opposition against “ROCK 101”, finding such
trademark may be confused with TFC’s “Taipei 101” trademarks (See below).
The contested trademark, ROCK 101 (Reg. No. 02227032, see below), was filed by School of Rock, LLC (“SR”) on September 28, 2021, and granted on June 1, 2022, designated for use in goods under class 25 (cloths, apparel, shirt, sportswear, etc.) and services under class 41 (educational services, musical event, concert, live performance, seminar, recreational service, training and coaching services, etc.). TFC filed opposition action against SR on August 31, 2022, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.
In its
determination, TIPO finds “ROCK 101” should be subject to Article 30.1.10 of
Trademark Act:
1.
Article
30.1.10 of Trademark Act provides that a mark shall not be registered if such a
mark is 1) being identical with or similar to another person’s registered
trademark or earlier filed trademark; and 2) 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 3) hence there
exists a likelihood of confusion on relevant consumers.
2.
On
similarity, since both “Taipei 101” and “ROCK 101” include the numbers “1”, “0”,
and “1”, TIPO considers “101” would still be the part that draws the attention
of ordinary consumers. As such, TIPO opines “ROCK 101”is verbally and visually
similar with “Taipei 101”. The degree of similarity is medium.
3.
As
to the designated use of goods and services, TIPO finds “Taipei 101” is also used
in similar kind of services like retails service for clothing, musical performance
event, opera and drama performance, and sport event. These services are similar
with and related to the products and services designated by “ROCK 101”.
4.
Taipei
101 tower is the skyscraper owned by TFC, and has been known as Taipei’s landmark
for a long time. Through TFC’s continuous efforts in marketing and promoting
over the years, including its involvement in a variety of recreational,
artistic, and sports events, “Taipei 101” is not just a name of an iconic building,
but also acquires distinctiveness and becomes well-known in services such as department
store, shopping, and financial services. As such, TIPO affirms “Taipei 101” has
acquired distinctiveness, and consumers are more familiar with TFC’s “Taipei
101”.
5.
Based
on the reasons that there is medium degree of similarity between “Taipei 101”
and “ROCK 101”, that both trademarks are applied for use in similar products
and services, that “Taipei 101” demonstrates strong acquired distinctiveness, and
that consumers are probably more familiar with “Taipei 101” than “ROCK 101”, TIPO
concludes there is likelihood that consumers may confuse “ROCK 101” with “Taipei
101”. As such, “ROCK 101” is found confusingly similar and should be canceled
accordingly.
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