Taiwan’s IP and Commercial Court affirmed TIPO’s finding, ruling “appleman” is confusingly similar with Apple Inc.’s famous trademark “APPLE”

On June 14, 2024, Taiwan’s IP and Commercial Court (“IPC Court”) affirmed the finding of Taiwan’s IP Office (“TIPO”) in a trademark opposition filed by Apple Inc., determining that the contested trademark “appleman” should be canceled in view of likelihood of confusion with Apple Inc.’s famous trademarks “APPLE” (no. 01457997 and no. 01591959, see below).

 

The contested trademark (no. 02138662, see below), was filed on June 29, 2020, and granted on May 1, 2021, designated for use in services under class 35, including internet auctioning, leasing services for internet advertising, etc. Apple Inc. filed opposition on July 30, 2021, alleging, specifically, violation of Article 30.1.11 of Trademark Act. TIPO found the contested trademark shall be canceled. The registrant of the contested trademark appealed to the Petition and Appeals Committee of the Ministry of Economic Affairs (“Committee”). The Committee rejected the appeal, and the registrant further challenged TIPO’s determination to the IPC Court.

The IPC Court affirmed the TIPO’s determination:

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”.

2.      Firstly, based on the evidence submitted by Apple Inc., including the records of registrations of trademarks, catalogues of products, news reports of Interbrand, Forbes, BrandZ, and sales records, the IPC Court agrees that the alleged “APPLE” trademarks are already well-known at the time when the contested trademark was filed.

3.      On similarity, the registrant argued that the contested trademark is actually the combination of “app” and “leman” (i.e., lover), so it should be different from Apple Inc.’s “APPLE”. The IPC Court disagreed. The IPC Court finds the design concept of a trademark is generally not accessible for ordinary consumers. When seeing the contested trademark, consumers would still consider “apple” as the dominant portion of the contested trademark, and therefore may develop the impression that the contested trademark is visually, orally, and conceptually similar with Apple Inc.’s famous trademarks.

4.      The IPC Court further notes that “APPLE” is highly distinctive and has been used in a variety of products and services, such as webinar, computer software, telecom services, retail for computer accessories, etc. Consumers are more familiar with Apple Inc.’s “APPLE”. Besides, these services, the IPC Court opines, are related to transmission of data or video via internet, and thus are similar to or associated with the nature of the services designated by the contested trademarks.

5.      In view of the above, since 1) the cited “APPLE” trademarks are distinctive and have been well-known; 2) there is similarity between “appleman” and “APPLE”, and 3) consumers are more familiar with “APPLE” in view of its diversification of use in products and services, the registration of the contested trademark indeed may cause confusion with Apple Inc.’s “APPLE” among the relevant consumers.

 

As a result, the IPC Court denied the registrant’s request to vacate the determination made by TIPO.

  

Source: 112 Shin-Shang-Su Zi No. 64 (IPC Court, 2024) 

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,112%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c64%2c20240614%2c2 

Justin Bieber’s apparel brand successful in canceling trademark that was filed with intent to imitate

On May 29, 2024, Taiwan’s IP Office (TIPO) canceled trademark no. 02336207 “Drew House” (see below), finding such trademark was filed with intent to imitate the apparel brand founded by the worldwide famous singer and producer Justin Bieber and his friends.

The contested trademark, “Drew House”, was filed on January 20, 2022, and granted on November 16, 2023, designated for use in services under class 35, including online auction, online market service for seller and buyer, broker service for second-hand goods, agent for import and export service, providing market information, etc. NSN APPAREL CO., LLC. (“NSN”), the company that holds the “DREW HOUSE” brand, filed opposition on February 16, 2024, alleging that the contested trademark should be canceled based on Article 30.1.12 of Trademark Act.

TIPO sided with NSN, finding that:

1.      Article 30.1.12 of Trademark Act provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration”.

2.      Based on evidence submitted by NSN, including the sales records on Shopify, news report, and webpages of NSN’s official website, TIPO is convinced that prior to the application date of the contested trademark, “DREW HOUSE” has been used by NSN as trademark on apparel, socks, and other services for selling on the internet.

3.      TIPO also finds that the designated services of the contested trademark is related to or associated with the goods or services in which NSN’s “DREW HOUSE” is applied for use. For example, both are used for internet services that meet the consumers’ demands for online purchase. Further, TIPO notes that the applicant of the contested trademark once filed the same mark designated for use in goods related to apparel. As such, TIPO determines that the applicant is engaged in similar business in clothing and apparel, which puts applicant in a position that renders it more familiar with others’ apparel brands, and thus is more likely to know the existence of “DREW HOUSE”.

4.      In view of the above, given that “DREW HOUSE” is unique and not commonly used by others as trademark, that the applicant of the contested trademark is engaged in similar business and should know the existence of NSN’s “DREW HOUSE”, and that the contested trademark filed by the applicant features the same letters as NSN’s “DREW HOUSE”, TIPO concludes that the high similarity between the contested trademark and NSN’s “DREW HOUSE” could hardly be considered as mere coincidence. TIPO therefore determines that the applicant filed the application with intent to imitate NSN’s “DREW HOUSE”, and that the registration of the contested trademark should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZWxWbTVqV0JES2M0bEEvMDUreVhhUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

 

The Polo/Lauren Company scores a win in opposition against “WILLIAMPOLO”

On May 31, 2024, Taiwan’s IP Office (“TIPO”) entered a determination in the favor of the Polo/Lauren Company, L.P. (“Polo/Lauren”), finding “WILLIAMPOLO” should be canceled due to likelihood of confusion with Polo/Lauren’s trademarks (no. 00321855, 00139937, 00139936, 00581527, and 01686230, see below).

The contested trademark, “WILLIAMPOLO” (no. 02237994, see below), was filed on October 11, 2021, and granted on July 16, 2022, designated for use in goods under class 18 (including purse, handbag, backpack, suitcase, shopping bag, wallet, etc.) and services under class 35 (including retail service for apparel, handbag, purse, etc.). Polo/Lauren filed opposition on October 13, 2022, citing violations of, among the other, Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Polo/Lauren on May 31, 2024:

1.        Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is similar with other’s registered trademark which is applied for use on similar services or products, thereby causing likelihood of confusion among the relevant consumers.

2.        The contested trademark is formed by “WILLIAMPOLO” and a logo of polo player with wings. Comparing the contested trademark with Polo/Lauren’s trademarks, TIPO notes that both feature the word “POLO”, and a polo player holding a prolonged object. Thus, there is verbal and conceptual similarity between the contested trademark and Polo/Lauren’s trademarks.

3.        Turning to the designated goods and services, TIPO notes that Polo/Lauren’s trademarks are also applied for use in similar products like briefcase, shopping bag, luggage, and in services including online retail services. TIPO finds these products and services are of similar nature and function with those designated by the contested trademark. Thus, TIPO considers the contested trademark is applied for use in goods and services that are similar with Polo/Lauren’s trademarks.

4.        Furthermore, based on the evidence of use of trademark, including news reports, marketing materials, and sales of products, TIPO finds Polo/Lauren’s trademarks are more famous, and consumers are more familiar with Polo/Lauren’s trademarks. 

5.        In view of the above, given that the contested trademark is similar with Polo/Lauren’s trademarks, that both trademarks are applied for use in similar goods and services, that Polo/Lauren’s trademarks are distinctive, with which consumers are more familiar, TIPO concludes that the registration of the contested trademark may cause confusion among the relevant consumers. As such, TIPO cancels the contested trademark based on Article 30.1.10 of Trademark Act accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dHQ3cEJVQzVoR0VaZ1RKRm5UMnZ6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office did not side with Sony in its trademark opposition against “SONiX”

On April 30, 2024, Taiwan’s IP Office (“TIPO”) rejected trademark opposition filed by Sony Group Corporation (“SONY”), finding registration of the contested trademark “SONiX” would not cause confusion with SONY’s well-known trademark “SONY ” (No. 01379063, see below).

The contested trademark, “SONiX” (No. 02237322, see below), was filed by SONIX Technology Co. Ltd. (“STC”) on July 27, 2021, and granted on July 16, 2022, designated for use in services under class 42, including design services for integrated circuits, computer software, PaaS, SaaS, etc. SONY filed trademark opposition against “SONiX” on October 14, 2022, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.   

TIPO did not find for SONY. In its determination, TIPO opined that:

1.        There is medium degree of similarity between “SONY” and “SONiX”. In addition, the services designated by STC’s “SONiX” are related to those designated by “SONY”, which also covers various services like computer data processing, integrated circuits design, and software design. Further, based on the voluminous records submitted by SONY, prior to the application date of “SONiX”, SONY’s trademark “SONY” has become well-known in the fields of consumer electronics, digital cameras, and relevant accessories.

2.        However, records also show that STC was established in as early as 1996, and has actively used “SONiX” as trademark in providing its IC design services, including MCU, consumer IC, optical ID, etc. Based on STC’s evidence, it has been using “SONIX” trademark since at least 1998, including its registrations of similar “SoNiX” trademark for similar services under class 42 in 1999 (Reg. No. 00117573, see below), STC’s annual reports between 2000-2019, markets reports (ranking STC as the TOP3 consumer IC design in Taiwan), and numerous news reports. As such, TIPO is of the view that “SONiX” and “SONY” have co-existed for a long time, and the relevant consumers should be able to discern the two based on their accumulated familiarity and distinctiveness in the relevant markets. 

3.        Further, TIPO notes that there is no evidence of actual confusion, and that STC’s contested trademark is originated from its earlier “SONiX” trademark, which only slightly differs in terms of font and style. As such, STC’s filing should be based on good faith. 

4.        In view of the above, although “SONY” is a well-known trademark, there is similarity between “SONY” and “SONiX”, and there is relevancy between the two trademarks’ designated services, TIPO posits that there should be no confusion among the relevant consumers due to the long time co-existence between STC’s “SONiX” and “SONY”. 

5.        Further, since STC’s filing of “SONiX” is based on good faith, and “SONiX” is also distinctive and has gathered considerable recognizability in the market, the consumers should be able to differentiate the two trademarks and STC should have no intent to imitate “SONY”. Thus, the reputation or uniqueness of “SONY” should not be harmed or diluted by registration of “SONiX”.

Based on the above reasons, TIPO found no violation of Trademark Act, and denied SONY’s opposition accordingly.

Source: 

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTIrcENtSEhNYlN6SE5oSGt0c0hHUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LV’s attempt to cancel trademark “VJ” fell short

On April 30, 2024, Taiwan’s IP Office (“TIPO”) rejected trademark opposition filed by the French fashion giant, Louis Vuitton, finding the contested trademark “VJ” would not cause confusion with Louis Vuitton’s famous “LV” logo (Reg. No. 01922370, see below).

 

The contested trademark, No. 02274728 (see below), was filed on June 17, 2022, and granted on January 1, 2023, designated for use in goods under class 3 (care and cosmetics products) and services under class 35 (advertising service). Louis Vuitton filed opposition on March 21, 2023, citing violations of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO did not side with Louis Vuitton. In its determination, TIPO found that:

1.      Article 30.1.10 of Trademark Act provides that a mark shall 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.      Article 30.1.11 of Trademark Act further provides that a mark shall not be registered if such a mark is “being 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”.

3.      The similarity between Louis Vuitton’s “LV” and the contested trademark is low. In its entirety, aside from the stylized and overlapping letters “V” and “J”, TIPO notes that the contested trademark features other elements, including “Vitoria&Jane”, and “唯真”, against a blue backdrop. While Louis Vuitton’s “LV” logo also features two overlapping letters “L” and “V”, TIPO considers the overall visual impression formed by the contested trademark is different from that by Louis Vuitton’s logo. Taken as a whole, ordinary consumers would not consider the contested trademark similar with the “LV” logo because in addition to the two overlapping “V” and “J” letters, there are other noticeable features presented in the contested trademark.

4.      Louis Vuitton’s logo is famous in the fields of fragrance, cosmetics, handbags, fashionable accessories, etc. And consumers are more familiar with Louis Vuitton’s logo in the relevant fields. However, the contested trademark is not just used in cosmetics, but also used in advertising service, which is different and dissimilar with Louis Vuitton’s logo. TIPO also notes that there is no evidence showing application of the contested trademark was filed based on bad faith, or actual confusion has been caused, which are factors tilted to the favor of the contested trademark.

In view of the above, TIPO concludes there is no violation of Article 30.1.10 and 30.1.11 of Trademark Act. Although Louis Vuitton’s “LV” has been well-known, the similarity between the two trademarks, and their respective designated goods/services are low. Moreover, there is no evidence showing bad faith and existence of actual confusion. The reputation or distinctiveness of “LV” would not be harmed because the similarity between the two trademarks is low, and there is no evidence showing registration and use of the contested trademark will lead to negative connection with Louis Vuitton’s “LV”. 

Therefore, Louis Vuitton’s opposition is rejected by TIPO accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTIrcENtSEhNYlIzaGpXRWZrVGd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true