On July 31, 2024, Taiwan’s IP Office (“TIPO”)
found in the favor of KABUSHIKI KAISHA STUDIO GHIBLI (“STUDIO GHIBLI”), the
registrant of series of trademarks for the iconic movie character “TOTORO” (No.
00732869, No. 00734512, No. 00745288, No. 00745435, No. 00820100, No. 00882183,
and No. 01483332, see below), determining that the contested trademark No. 02304914
shall be canceled due to its similarity with STUDIO GHIBLI’s famous trademarks.
The contested trademark, No. 02304914 (see
below), was filed on October 21, 2022, and granted on July 1, 2023, designated
for use in various kinds of pet products under class 31, such as pet food, pet
drinks, animal food, cat mint, dog biscuit, fresh vegetables, etc. STUDIO
GHIBLI filed trademark opposition on September 27, 2023, citing violations of
Article 30.1.10 and 30.1.11 of Trademark Act.
TIPO sided with STUDIO GHIBLI on the ground
of Article 30.1.11, reasoning that:
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.
Here, TIPO notes that “TOTORO”
is the famous character in STUDIO GHIBLI’s popular animation “My Neighbor
Totoro”. The Japanese animation was first released in 1988 in Japan, and has established
great popularity since then. Following its success in the box office, STUDIO
GHIBLI also produced various kinds of merchandise and obtained registrations of
trademarks based on the popular character “TOTORO”. Based on the evidence of
sales records, marketing materials, movie awards, and exhibition activities,
TIPO is of the view that STUDIO GHIBLI’s cited trademarks have been well-known among
the relevant consumers when the application of the contested trademark was
filed in 2022.
3.
As to similarity, although the
contested trademark consists of word “JONSANTY” and a cartoon figure, TIPO
finds the cartoon figure presented in the contested trademark is highly similar
with STUDIO GHIBLI’s “TOTORO” trademarks. For example, both feature similar cat
ears, circular eyes, circular body shape, and similar patterns on their chests.
Therefore, the contested trademark is conceptually and visually similar with STUDIO
GHIBLI’s “TOTORO” trademarks.
4.
Further, TIPO notes that STUDIO
GHIBLI’s “TOTORO” trademarks are very unique, as most of the trademarks featuring
similar cartoon figures are all owned by STUDIO GHIBLI. In other words, such
cartoon figure has not been commonly adopted as trademarks by others. Upon
seeing the “TOTORO” trademarks, there is strong inclination for the consumers
to link the trademarks with STUDIO GHIBLI’s products or services. Moreover, due
to the popularity of the animation, STUDIO GHIBLI’s “TOTORO” has established
strong distinctiveness among the relevant consumers.
5.
In view of the above, given
that STUDIO GHIBLI’s “TOTORO” trademarks are well-known, that such trademarks are
unique and highly distinctive, and that there is similarity between the contested
trademark and STUDIO GHIBLI’s cited trademarks, TIPO opines the registration of
the contested trademark used for pet products may dilute the distinctiveness
and uniqueness of STUDIO GHIBLI’s “TOTORO” trademarks. Thus, the registration of
the contested trademark shall be canceled accordingly.
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