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