2024年5月5日 星期日

PILI’s trademark opposition based on the name of its iconic character “一頁書” falls short

When speaking of Taiwan’s glove puppet show (also known as “Bu-dai-xi”), what most Taiwanese would come to mind would be Pili Puppetry (“PILI”), the leading puppetry show in Taiwan. Throughout the past 30 years, PILI has created more than 80 series and introduced more than 4000 hero characters to fans all around the world, including the recent release on Netflix, PILI Fantasy, War of Dragons. Among the heroes, “一頁書” (transliteration: “Yi-Yeh-Shu”), is the most iconic and famous one (https://www.pili.com.tw/role-view/shu/). PILI also filed and acquired trademark registrations for such popular character, including no. 00977544 and no. 00162316 (see below).

 


On December 22, 2022, PILI filed opposition against trademark no. 02262794 (see below). The contested trademark was filed on January 13, 2022, and granted on November 16, 2022, designated for use in services under class 35, including advertising, marketing, auctioning, telephone marketing, SEO service, retail service for apparel accessories, etc.

PILI cited Article 30.1.11 of Trademark Act, and contended that the name of its character “一頁書” has become a well-known trademark, and the registration of the contested trademark would cause confusion. Unfortunately, Taiwan’s IP Office (“TIPO”) disagreed.

On April 10, 2024, TIPO found against PILI, 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 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”. Thus, to be applicable, PILI must first prove its “一頁書” is a well-known trademark.

2.      While there are significant amount of records and documents featuring PILI’s character “一頁書”, TIPO find most of them insufficient to support PILI’s contention that its “一頁書” has become a well-known trademark. The documents submitted by PILI are either not dated, or merely news reports or video clips covering the character itself. Without evidence of continuous and consistent use of “一頁書” as a trademark, TIPO does not consider “一頁書” has become a well-known trademark.

3.      Because PILI’s evidence could not show “一頁書” is a well-known trademark, TIPO finds Article 30.1.11 not applicable, even though the contested trademark is identical to the name of PILI’s popular character.

In view of the above, TIPO denies PILI’s opposition based on Article 30.1.11 of Trademark Act. The fact that “一頁書” is the name of a famous character does not necessarily mean it is well-known as a trademark.  

 

Source:

https://www.pili.com.tw/about-en.php

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cG0vK2pMeWlweE1XUFRCNXVXcXBTdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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