Appeals and Petitions Committee affirmed Valve’s win in its trademark opposition against “&TEAM”

On April 12, 2024, the Appeals and Petitions Committee of Ministry of Economic Affairs (“Committee”) affirmed the finding made by Taiwan’s IP Office (“TIPO”) in the trademark opposition between “STEAM” and “&TEAM”, concluding that registration of “&TEAM” for use in certain categories of the services under class 41 should be canceled due to likelihood of confusion with Valve’s “STEAM” trademarks (Reg. No. 01644559 and 02207353, see below).

The contested trademark, “&TEAM” (Reg. No. 02163446, see below), was filed by HYBE LABELS JAPAN INC. (“HYBE”) on December 24, 2020, and granted on August 16, 2021, designated for use in services under class 41, including, among the others, services for online non-downloadable game services, dance school education, photography, organizing competitions, organizing cultural, educational or educational magazine exhibitions, organizing educational competitions, organizing entertainment, sports and cultural activities, provides online game services for entertainment and education and learning (by computer network), provides online game services (by computer network), recording product production, etc.

Valve filed opposition on October 29, 2021, alleging violation of Article 30.1.10 and 30.1.11 of Trademark Act. TIPO entered its determination on October 27, 2023, siding with Valve, and finding “&TEAM” should be canceled according to Article 30.1.10 of Trademark Act. HYBE then appealed TIPO’s determination to the Committee.

The Committee affirmed TIPO’s determination based on the following reasons:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is: 1) 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.      HYBE contended that the difference of initial letters between “&TEAM” and “STEAM” renders the two trademarks different from each other. The Committee disagreed. The difference created by the “&” of “&TEAM” is too minor and thus is insufficient to make HYBE’s “&TEAM” distinguishable from Valve’s “STEAM”.

3.      As to the designated use of product and service, the Committee found Valve’s “STEAM” trademarks are used in products and services under class 9 and 41, including gaming software, downloadable gaming software, online gaming and entertainment service, and gaming and entertainment service provided via wireless connection, organizing cultural or sports activities, etc. These services, the Committee opined, are related to the services designated by HYBE’s “&TEAM”, because both related to products or services pertaining to computer software, entertainment, education, and activities organization.

4.      While the Committee agreed that both HYBE’s “&TEAM” and Valve’s “STEAM” are distinctive, there is no record to support a finding that consumers are highly familiar with “&TEAM” and could distinguish HYBE’s “&TEAM” from Valve’s “STEAM”. Rather, the evidence of trademark use submitted by Valve shows that consumers are more familiar with Valve’s “STEAM” than HYBE’s “&TEAM”.

In view of the above, considering the similarity between HYBE’s “&TEAM” and Valve’s “STEAM”, the fact that both HYBE’s “&TEAM” and Valve’s “STEAM” are used in services related to computer game and entertainment activities, and consumers’ familiarity toward Valve’s “STEAM”, the Committee opines registration of HYBE’s “&TEAM” is likely to cause confusion with Valve’s “STEAM” among the relevant consumers. Therefore, TIPO’s finding of violation of Article 30.1.10 is affirmed accordingly.

 

Source:

Committee’s determination: https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=G01100608&docDate=113/04/15&type=1&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

TIPO’s determination: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RUZQV0hTbkpRdit6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true