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