On December 10, 2024, sportwear brand Under Armour Inc. (“Under Armour”) successfully convinced Taiwan’s IP Office (“TIPO”) that trademark no. 02354614 shall be canceled due to being confusingly similar to Under Armour’s famous “UA” logos (no. 01070778, 01429810, 01510157, and 01520380, see below).
The contested trademark, no. 02354614 (see
below), was filed on May 29, 2023, and granted on February 1, 2024, designated
for use in goods under class 25, including jackets, pants, shirts, underwear,
T-shirt, socks, suits, belts, sportwear, etc. Under Armour filed opposition on
April 30, 2024, alleging violation of Articles 30.1.10 and 30.1.11 of Trademark
Act.
1.
Article 30.1.10 of Trademark Act
provides that a mark shall not be registered if such a mark is being “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.
On similarity, TIPO found the
contested trademark featured stylized character consisting of two intersecting U-form
letters pointing to the opposite direction. And, like Under Armour’s “UA” logos,
the contested trademark would form a visual impression that resembles letter “X”
or “H”. As such, TIPO considered the contested trademark visually and conceptually
similar to Under Armour’s “UA” logos.
3.
As to similarity of the
designated goods, TIPO noted that both the contested trademark and Under Armour’s
“UA” logos cover clothing and apparel products, which serve similar functions
and overlap in terms of their customers, sales channels, or usage.
4.
As to consumer’s familiarity,
TIPO found this factor tilted to Under Armour’s favor, given that Under Armour
has submitted sufficient evidence of trademark use in support of the market
recognition of its “UA” logos, including catalogues, webpages, sales records,
etc. In contrast, there was no evidence submitted to support the use of the
contested trademark.
5.
In light of the above,
considering the similarity between the contested trademark and Under Armour’s “UA”
logos, the overlap of the designated products, the facts that “UA” logos are
distinctive and consumers are more familiar with Under Armour’s brand, TIPO determined
that the registration of the contested trademark may cause confusion among the
relevant consumers. The contested trademark was therefore canceled by TIPO
accordingly.
Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a1BsSkpGeEpqU1NmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true
