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.
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