Levi Strauss Lost Its Trademark Opposition Against “YOCKERS”

On March 29, 2024, Taiwan’s IP Office (“TIPO”) found Levi Strauss & Co.’s (“LEVI”) “DOCKERS” not similar with the registered trademark “YOCKERS”.

The opposition was filed on July 13, 2022 by LEVI, the registrant of Taiwan’s trademark “DOCKERS” (No. 00397940, No. 00729011, and No. 00831617, see below), against “YOCKERS”, the trademark held by RED ANT SHOES CO., LTD.’s (Red Ant). LEVI cited violation of Article 30.1.10 of Trademark Act.  

Red Ant’s contested trademark, “YOCKERS” (No. 02215390, see below), was filed on October 20, 2021, and granted on April 16, 2022, designated for use in goods under class 25, including slipper, shoes, sandals, boots, pants, ties, raincoats, belts, etc. LEVI contended that Red Ant’s “YOCKERs” is confusingly similar with LEVI’s “DOCKERS”, and requested TIPO to cancel the contested trademark accordingly.

TIPO did not side with LEVI. In its determination made on March 29, 2024, TIPO found Red Ant’s “YOCKERS” not similar with LEVI’s “DOCKERS”:

1.      Article 30.1.10 of Trademark Act provides that a mark should 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.”

2.      While both LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” share similar letters “OCKERS”, TIPO considers “YOCKERS” different from “DOCKERS”. Conceptually, “YOCKERS” has no specific definition in dictionary, but “DOCKERS” refers to “person who works at port.” Verbally and visually, the difference in the initial letters also renders the pronunciation and overall appearance of the two trademarks different from each other. As such, TIPO considers “DOCKERS” dissimilar with “YOCKERS”.

3.      TIPO notes that Red Ant’s “YOCKERS” is used in products that are similar with LEVI’s “DOCKERS”, and that both LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” are distinctive trademarks. However, based on the submitted records, TIPO finds there is no evidence showing consumers are more familiar with LEVI’s “DOCKERS” than Red Ant’s “YOCKERS”. Besides, there is no finding of actual confusion.

4.       Although Red Ant’s “YOCKERS” is used in products that are similar with LEVI’s “DOCKERS”, TIPO holds the view that consumers will not be confused, because LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” are dissimilar, and both trademarks are distinctive with respect to the products which they are applied for use. As such, consumers should be able to distinguish products bearing Red Ant’s “YOCKERS” from products bearing LEVI’s “DOCKERS”.

In view of the above, LEVI’s opposition based on Article 30.1.10 of Trademark Act is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bEpzaVdyUit2b2RGelhPS083bFlhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s Intellectual Property and Commercial Court sided with LOUIS VUITTON in its infringement action against MF Production Co.

On March 27, 2024, Taiwan’s Intellectual Property and Commercial Court (“TIPC”) found for the French fashion giant LOUIS VUITTON MALLETIER (“LV”), finding products sold by MF Production Co. (“MF”) infringed upon LV’s well-known trademarks (see below).

The defendant, MF, is a company that provides retail service for apparel and accessories. According to LV, MF uses logos and patterns that are highly similar with LV’s trademarks, and thus should be held responsible for trademark infringement. MF argues that its use of similar logos and marks are all of parody use (see below), and should be exempted from trademark infringement. TIPC disagrees.

In its judgment, TIPC firstly finds that the logos and marks used by MF on its products are all highly similar with LV’s asserted trademarks. Additionally, since LV’s asserted trademarks are well-known and have been used in a variety of kinds of goods, it is likely that consumers will be confused and mistakenly believe that products offered by MF are originated from LV.

As to MF’s defense of parody use, the court holds that to successfully raise parody use as defense, defendant must show that its use “manifests that the products have no relationship with LV’s trademark”, and that “consumers could, upon seeing defendant’s products, immediately understand that the products aim to tease, ridicule, or mock LV’s trademark.” After examining MF’s accused products, the court concludes that MF’s use does not constitute parody, because LV’s trademarks are all placed in the central or most dominant position, and consumers could hardly notice the accused products are MF’s, not LV’s. Besides, the court could find no sense of teasing or mocking based on MF’s use. Therefore, MF’s defense based on parody fails, and the court rules that MF is liable for infringing LV’s famous trademarks. MF is subject to injunction, and shall compensate LV for damages roughly NT$ 6.6 million.

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c35%2c20240327%2c1 (111-Ming-Shang-Su-Zi No. 35, IPC Court)

Oral Care Giant Colgate Palmolive Successfully Fends Off Trademark Opposition Over Its “COLGATE KEEP”

On March 15, 2024, Taiwan’s IP Office (“TIPO”) rendered a determination in the favor of Colgate Palmolive Company (“Colgate”), finding Colgate’s registered trademark “COLGATE KEEP” (Reg. No. 02249801, see below ) would not cause confusion with the asserted trademark “keep keep”.

Colgate’s “COLGATE KEEP” was filed on January 18, 2022, and granted on September 16, 2022, designated for use in products like toothbrush. MEI CHI Enterprise Co. Ltd. (“MEI-CHI”), the registrant of the trademark “keep keep” (Reg. No. 01590217, see below), filed opposition against Colgate on November 29, 2022 , contending that registration of “COLGATE KEEP” will cause confusion with its “keep keep”, and thus has violated Article 30.1.10 of Trademark Act.

 TIPO sided with Colgate on March 15, 2024, finding that:

1.        Although both “COLGATE KEEP” and “keep keep” contain the same word “keep”, the initial word “COLGATE” in “COLGATE KEEP”, in TIPO’s opinion, carries specific weight. TIPO also notes that “COLGATE” has established great recognizability among the relevant consumers via Colgate’s longtime use and marketing, including series brands like “COLGATE ACTIBRUSH”, “COLGATE JUNIOR”, “COLGATE PRECISION”, etc. In contrast, TIPO notes that there are other registered trademarks ending with the word “keep” that are also used in similar personal hygiene or toothbrushes products. That is to say, in the relevant product field, consumers would pay more attention to the initial word “COLGATE”, and should be able to distinguish “COLGATE KEEP” from “keep keep” despite of the similarity over “keep”. As such, the overall similarity between “COLGATE KEEP” and “keep keep” should be low.

2.        TIPO finds both “COLGATE KEEP” and “keep keep” distinctive, because both trademarks are not related to the function or nature of the goods in which they are used. Further, TIPO notes that Colgate’s “COLGATE KEEP” is applied for use in toothbrush, which is identical to product that is designated by MEI CHI’s “keep keep”. Colgate’s “COLGATE KEEP” and MEI CHI’s “keep keep” are applied for use for the same product. The degree of similarity over the designated product is high.

3.        Even though MEI CHI has shown the distinctiveness of its “keep keep”, and the degree of similarity between the designated products, TIPO opines these factors are not enough to establish likelihood of confusion in light of the low degree of similarity between “COLGATE KEEP” and “keep keep”. Besides, there is no evidence of actual confusion. TIPO therefore concludes that consumers should be able to discern “COLGATE KEEP” and “keep keep”, and will not confuse MEI CHI’s “keep keep” with Colgate’s “COLGATE KEEP”.

Based on the reasons above, MEI CHI’s trademark opposition against Colgate is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bUt1Yjg4UTBBVzJQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true