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.
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