Nike scored a win in trademark opposition for its “SNKRS” trademark

On June 26, 2024, Taiwan’s IP Office (“TIPO”) ruled in favor of Nike Innovate C.V. (“Nike”), finding the contested trademark “SNKRDUNK” confusingly similar with Nike’s trademark “SNKRS” (no. 01837088, see below), and thus should be canceled in accordance of Article 30.1.10 of Trademark Act.

The contested trademark, “SNKRDUNK” (no. 02282820, see below), was filed by Soda Inc. (“Soda”) on July 19, 2022, and granted on March 1, 2023, designated for use in goods under class 9, including downloadable computer program, downloadable computer application software, downloadable music file, electronic publications, downloadable mobile graphics, etc. Nike filed trademark opposition on May 30, 2023, alleging violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Nike for the following reasons:

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.    In terms of similarity, the contested trademark and Nike’s cited trademark both share the same initial characters “S”, “N”, “K”, and “R”. While there is additional letter “S” in Nike’s trademark, such difference is minor and insufficient to make Soda’s “SNKRDUNK” as a whole visually or verbally distinguishable from Nike’s “SNKRS”. In sum, Soda’s “SNKRDUNK” is similar with Nike’s “SNKRS”.

3.    Soda argued that Nike’s cited trademark is designated for use in software application for smartphones and mobile devices, computer software for social networking, etc., which are different from the use designated by Soda’s contested trademark. TIPO disagreed, and found those products are all related to computer software, and may serve similar or overlapping functions for consumers. Accordingly, if similar trademarks are used on these products, ordinary consumers are inclined to find these products probably are originated from the same or related suppliers.

4.    Further, according to the evidence of trademark use, including the “SNKRS” app (available on Google Play and App Store) used by Nike in selling its sportwear, webpages, and news reports like Hypebeast, TIPO is convinced that since as early as 2015, Nike has been using “SNKRS” in marketing and selling its sportwear and footwear. Since Soda did not submit the corresponding evidence of actual trademark use, TIPO finds Nike’s “SNKRS” more famous among the relevant consumers.

5.    In view of the above, considering the facts that “SNKRDUNK” is similar with “SNKRS”, that both trademarks are used in products that are related to computer software or applications, and that Nike’s “SNKRS” is distinctive with which ordinary consumers are more familiar with, TIPO reaches the conclusion that Soda’s “SNKRDUNK” may cause confusion with Nike’s “SNKRS” in the relevant consumers. Therefore, TIPO determines that Soda’s “SNKRDUNK” should be canceled in view of Article 30.1.10 of Trademark Act.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YlMzNzhQL2Yvc2xGelhPS083bFlhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fashion brand “CHOO” secured another win over PPB Studios’ “CHUU PPB STUDIOS”

On June 27, 2024, J. CHOO LIMITED (“JC”), the registrant of trademark no. 02341750, 01661633, 01888397, 01744963, and 02003379 (see below), prevailed in trademark opposition against PPB STUDIOS CO., LTD. (“PPB”), convincing Taiwan’s IP Office (“TIPO”) that PPB’s trademark “CHUU PPB STUDIOS” may cause confusion with JC’s above cited famous trademarks.

PPB’s contested trademark, “CHUU PPB STUDIOS” (no .02326032, see below), was filed on January 30, 2023, and granted on October 1, 2023, designated for use in services under class 35, such as information service for consumers to choose goods and services, online shopping, retail and wholesale service for clothing, accessories, and bags, etc. JC filed opposition on December 22, 2023, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sides with JC in its determination rendered on June 27, 2024:

1.      Per Article 30.1.10 of Trademark Act, 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.      The initial word of PPB’s contested trademark “CHUU PPB STUDIOS” is “CHUU”, which constitutes the dominant portion of said trademark. Ordinary consumers would find “CHUU” similar with JC’s “CHOO”, as both share same letters “C” and “H”, and similar pronunciation and visual appearance. While there are additional “PPB” and “STUDIOS” presented in PPB’s contested trademark, such elements are not sufficient to create distinguishable differences. In the entirety, consumers will still view “CHUU PPB STUDIOS” similar with JC’s “CHOO”. The degree of similarity should be medium.

3.      Although PPB’s contested trademark is designated for use in various services for retail and wholesale, TIPO notes that these services may be used for retail and wholesale of products that JC’s “CHOO” is applied for use, such as bags, gloves, hats, purses, apparel, etc. In other words, the designated services of PPB’s trademark are associated with the services or products designated by JC’s trademarks, because both serve similar or relevant functions for satisfying consumers’ needs for purchasing clothing, bags, or accessories.

4.      As to the comparison of distinctiveness and fame between JC’s and PPB’s trademarks, TIPO finds these factors titled to JC’s favor. JC’s “CHOO” is highly distinctive, and has achieved profound popularity and recognizability via JC’s marketing and use worldwide. To the contrary, PPB has submitted no evidence of use regarding its contested trademark. Thus, TIPO opines consumers are more familiar with JC’s “CHOO”.

5.      In light of the above, considering that there is medium degree of similarity between “CHUU PPB STUDIOS” and “CHOO”, that “CHUU PPB STUDIOS” is designated for use in services that are associated with goods or services designated by JC’s “CHOO”, and that JC’s “CHOO” is more famous with which consumers are more familiar, TIPO concludes that PPB’s “CHUU PPB STUDIOS” may cause confusion with JC’s “CHOO”.

Hence, TIPO canceled the registration of PPB’s contested trademark accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WXpqSVVmYUJzYkZWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LV successful in its infringement lawsuit against bootleg restaurant

On June 28, 2024, Taiwan’s IP and Commercial Court (“IPC Court”) sided with French giant Louis Vuitton (“LV”), finding that the defendant, “Bootleg Creativity Co. Ltd.”, infringed LV’s famous trademarks (See below).

 

In the lawsuit, LV alleged that the interior design, decorations, merchandise, and items displayed in the defendant’s restaurant (see below), all feature LV’s iconic monogram and trademarks without its prior license. As such, defendant’s use shall constitute trademark infringement under Article 68 and 70 of Trademark Act.

The defendant explained that all the accused products were sourced from MF Production Co., a company that provides bootleg merchandise under its own brand “MF BY GCDC”. Defendant argued that customers should be able to distinguish the products, because these products are bootlegs that serve as parody of LV’s brand.

The IPC Court did not find for the defendant, reasoning that:

1.    To defend based on parody, defendant’s use has to meet the following requirements: 1) demonstrating nature of entertainment based on satire or parody, and in the meantime creating contradictory comparison;

2) upon seeing the parody, the consumers could immediately perceive of the referred trademark;

3) the consumers could clearly distinguish the parody use from the referred trademark without any likelihood of confusion;

4) the parody use is so necessary for the public interest that freedom of expression would outweigh the protection of trademark; and

5) there is no improper use that may harm the reputation or distinctiveness of the famous trademark.

2.    Based on the above framework, the IPC Court finds the defendant’s use does not meet the aforesaid requirements. The degree of similarity between the defendant’s use and LV’s famous trademarks is high, and, upon examining the products displayed in the defendant’s restaurant, the IPC Court notes LV’s trademarks are all placed in the most dominant portion. In other words, consumers could rarely notice the presence of “MF BY GCDC”, let alone form comparison between the defendant’s use and LV’s trademarks. Besides, except for the voluminous use of LV trademarks in its products, the defendant has provided no explanations whatsoever as to what exactly satirical or parodical message that its use intends to convey.

3.    Since defendant is not exempt from trademark infringement liability, and there is likelihood of confusion caused by the defendant due to the similarity between defendant’s use and LV’s famous trademarks, the IPC Court holds that LV is entitled to injunctive relief and monetary remedy.  

In conclusion, the IPC Court overrules the defendant’s parody defense, grants LV’s motion for injunction, and awards LV NT$ 1,375,431 for damages.    

 

Source:  Case no.: 112-Ming-Shang-Su-Zi No.7, IPC Court (https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,112%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c7%2c20240628%2c1) 

Note 1: MF Production Co. was also found infringing LV’s trademarks by the IPC Court earlier this year (See: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c35%2c20240327%2c1 (111-Ming-Shang-Su-Zi No. 35, IPC Court))

Note 2:

Article 68 of Trademark Act

Infringement of registered trademark
Any of the following acts, without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1)Using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2)Using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3)Using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who, without the consent of the proprietor of a registered trademark, manufactures, sells, possesses, displays, exports, or imports labels, tags, packaging, containers, or service-related articles that bear trademarks the same or similar to said registered trademark of the identical or similar goods or services in the course of trade for their own use or for others, shall also be deemed an infringer of the right of such trademark.

Article 70 of Trademark Act

Acts deemed infringement
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1)Knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; or
(2)Knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.

 

UPS unable to cancel trademark “UPG” in its trademark opposition proceeding

On June 4, 2024, in a trademark opposition filed by UNITED PARCEL SERVICE OF AMERICA, INC. (“UPS”), Taiwan’s IP Office (“TIPO”) found there should be no confusion between the well-known trademark “UPS” (see below) and the contested trademark “UPG”, and therefore denied UPS’s opposition accordingly.

 

The contested trademark, “UPG” (no. 02226188, see below), was filed by Uni-President Enterprises Corp. (“Uni-President”) on December 6, 2021, and granted on June 1, 2022, designated for use in services under class 39, including, among the others, cargo packaging, cargo transportation, commodity express delivery, parcel delivery and express delivery, home delivery, cargo delivery, collection services for express delivery operators, mail delivery and express delivery, food transportation, etc. UPS filed trademark opposition against “UPG”, contending that the contested trademark is confusingly similar with its famous “UPS” trademarks.

TIPO did not side with UPS. In its determination, TIPO reasoned that:

1.      Based on the evidence presented by UPS, including the news reports and articles of BRANDZ, Forbes, The Independent, FT, and Brand Finance, throughout 2013 and 2017, the trademark “UPS” has been recognized as one of the most valuable brands around the globe. Besides, since1988, UPS has set up its branch office in Taiwan and started providing the delivery services to local consumers. As such, prior to the filing date of Uni-President’s “UPG”, the trademark “UPS” has achieved well-known status in the fields of mail and parcel delivery service.

2.      As to similarity, although both “UPS” and “UPG” share the same initial two letters “U” and “P”, their third letters are different. The difference between the “S” of “UPS” and “G” of “UPG” renders Uni-President’s contested trademark verbally, visually, and conceptually distinguishable from UPS’s trademark. Ordinary consumers will find the pronunciation and visual appearance of “UPG” different from those of “UPS”.

3.      As to the designated use of services, TIPO notes that while some of the services designated by Uni-President’s “UPG” are overlapping with those by UPS’s trademark, “UPG” is also used in other different areas like suitcase rental, vending machine replenishment. Thus, there is still difference in terms of the designated services between “UPS” and “UPG”.

4.      Although “UPS” is well-known, TIPO finds its use mainly concentrates on the area of delivery service, without evidence showing diversification of use in other categories. Thus, the scope of fame of “UPS” is limited to the areas related to parcel or mail delivery. Further, there is no evidence showing actual confusion or Uni-President’s bad faith when filing the application.

5.      In view of the above, even though “UPS” is a well-known trademark, given that the similarity between “UPS” and “UPG” is low, that the services designated by “UPG” are not totally similar with those by “UPS”, and that “UPG” and “UPS” each possess sufficient distinctiveness, TIPO opines ordinary consumers should be able to discern the difference between “UPG” and “UPS”. Hence, there should be no confusion caused among the relevant consumers, and the reputation and distinctiveness of “UPS” shall not be harmed due to the registration “UPG”.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4V2laWVI2SkkvY0VNNmtrRmxicVM5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true