On
July 10, 2024, Taiwan’s IP Office (“TIPO”) made a determination in favor of Gi-Co-Li
Digital Marketing Co. Ltd. (”GCL”), finding GCL’s trademark “Super+” will not
cause confusion with the famous apparel brand “Superdry” (no. 01472219, 01220154,
02055161, 02117209, and 01724579, all see below).
The contested trademark, no. 02249702 (see below), was filed by GCL on October 14, 2021, and granted on September 16, 2022, designated for use in goods under class 18, including various kinds of umbrella. On December 15, 2022, the then registrant of the aforesaid “Superdry” trademarks, DKH RETAIL LIMITED (“DKH”), filed opposition against GCL on grounds of Article 30.1.10, 30.1.11 and 30.1.12 of Trademark Act, alleging the registration of “Super+” will cause confusion with DKH’s famous “Superdry” trademarks among the relevant consumers.
TIPO
did not find for DKH in its determination on July 10, 2024:
1.
Based
on the evidence of use submitted by DKH, including the news reports by ELLE, ET
Today, records of sale in stores like outlets, department stores, and malls,
and photos of stores established in Taiwan, TIPO confirmed that “Superdry 極度乾燥 （しなさい）” (no. 01472219) and “SUPERDRY” (no.
01220154) have achieved the status of well-known trademark.
2.
Nevertheless,
TIPO found the similarity between GCL’s “Super+” and DKH’s cited trademarks is
low. While all trademarks start with “Super”, DKH’s cited trademarks are
followed by other various kinds of patterns, designs, or characters of other
foreign languages. In addition, “Super+” also features a drawing of an
umbrella, which further the visual difference. Taking all the elements into
consideration, TIPO posited that the degree of similarity between “Super+” and the
aforesaid “Superdry” trademarks is low.
3.
TIPO
noted that DKH’s cited “Superdry” trademarks are also applied for use in
similar umbrella products, which provide the same function for shelter from sun
or rain. Meanwhile, consumers are more familiar with DKH’s “Superdry” trademarks
due to its continuous use and marketing. However, TIPO also found the word “Super”
has been used by others’ registered trademarks in similar umbrella products, such
as “Super Bee” (no. 01100004), “SUPER TRAVELLER” (no. 01292638), and “Super” (no.
01128021). Hence, the use of “Super” as a trademark is less unique and its exclusivity
would be narrower. Accordingly, consumers should be able to discern “Super+”
from “Superdry”, and GCL’s “Super+” would be less likely to cause damage to the
reputation and distinctiveness of DKH’s above cited “Superdry” trademarks.
4.
In
view of the above, although “Superdry” is well-known and “Super+” was applied for
use in similar umbrella products, the degree of similarity between “Super+” and
“Superdry” is too low that ordinary consumers should be able to distinguish the
two trademarks. Further, given the similarity between “Super+” and “Superdry”
is low, TIPO was not convinced that GCL filed application with intent to
imitate “Superdry”, and that registration of “Super+” would damage the reputation
of “Superdry”.
DKH’s
opposition is therefore denied by TIPO accordingly.
Source:
Article
30 of Trademark Act:
A mark
shall not be registered if such a mark is:
……..
(11)Being 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, unless the proprietor of the said well-known trademark or mark consents to the application (30.1.11);
(12)Being 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, unless the proprietor of the said earlier used trademark consents to the application (30.1.12).
沒有留言:
張貼留言