On August 27, 2024, Taiwan’s IP Office (“TIPO”)
sided with tech giant Apple Inc. (“Apple”), canceling a trademark registration that
imitated Apple’s iconic white ring used in its MagSafe technology.
In 2020, when announcing its wireless charging technology MagSafe, Apple also released smartphone case with a white ring that could guide users in placing their iPhones more accurately, ensuring optimal charging efficiency (See below).
On February 15, 2023, a Taiwanese filed
trademark application that features two circular rings (see below), designated
for use in goods under class 9, including headphone, earbuds, wireless
headsets, smartphone cases, mobile phone cases, charger, mobile phone charger,
etc. The application was granted on November 1, 2023 (no. 02331397). Apple filed invalidation
action on May 14, 2024, citing violations of Article 29.1.1 and Article 29.1.3
of Trademark Act.
On August 27, 2024, TIPO found in Apple’s favor, determining that the disputed trademark shall be canceled on the ground of Article 29.1.1:
1.
Article 29.1.1 of Trademark Act
provides that a trademark shall not be registered if it consists “exclusively
of a description of the quality, intended purpose, material, place of origin,
or relevant characteristics of the designated goods or services”.
2.
Here, based on the evidence
submitted by Apple, including its 2020 press release for MagSafe, the photos of
the iPhone products, smartphone cases, and wireless chargers on Apple’s website,
and smartphone cases sold by other third-party vendors compatible with Apple’s
MagSafe technology, TIPO noted that the white ring on the back of iPhone cases
has been widely adopted to guide users to position their iPhones correctly for
charging.
3.
Hence, TIPO was convinced that when
seeing the disputed trademark used on the designated smartphone products, consumers
would perceive it as a functional indicator showing where to place their smartphones
to have optimal charging efficiency, rather than as a sign indicating the source
of product or service. Consumers would view the mark as descriptive of the
product’s function or characteristic.
4.
Given that the disputed
trademark consists of purely descriptive elements and lacks distinctiveness, TIPO
concluded that such trademark shall be canceled per Article 29.1.1 of Trademark
Act.
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