On November 28, 2024, Taiwan’s IP Office (“TIPO”)
ruled in favor of global coffee giant, Starbucks Corporation (“Starbucks”), finding
the disputed trademark “星爸爸Starpapa” may cause confusion with Starbucks’ well-known “STARBUCKS”,
“STARBUCKS COFFEE”, and “星巴克” trademarks (see below).
The application of the disputed trademark, “星爸爸Starpapa” (no. 02289875,
see below), was filed on June 6, 2022, and granted on April 1, 2023, designated
for use in goods under class 30 (e.g., tea drinks, tea bag, coffee, coffee
beans, bread, rice, instant noodles, etc.), and services under class 43 (e.g.,
restaurant, hotel, etc.). Starbucks filed invalidation action with the TIPO on
May 13, 2024, citing, among the others, violations of Article 30.1.11 of
Trademark Act.
1.
Given that the registration of
the contested trademark was published on April 1, 2023, Starbucks could not
challenge the registration by opposition, which must be filed within 3 months
after the contested trademark’s publication. As such, Starbucks filed
invalidation action per Article 59 of Trademark Act, which provides that an
interested party may file invalidation with the Registrar Office on the grounds
that such registration falls under Article 29, Article 30, or Article 65.
2.
Per Article 30.1.11 of
Trademark Act, a trademark 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.
3.
Here, based on the voluminous
evidence submitted by Starbucks, including its worldwide trademark
registrations, webpages, international awards, records of Starbucks’ 20 years
of marketing in Taiwan, including the development of 500 local coffee shops, and
TIPO’s prior determination, TIPO concluded that on the filing date of the
contested trademark, “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” have already become
well-known among the relevant consumers in the field of coffee industry.
4.
As to similarity, TIPO agreed
with Starbucks that the contested trademark is similar to the Starbucks’ aforesaid
well-known trademarks. On the one hand, “Starpapa” and “STARBUCKS” both share
the same initial letters “star”, followed by letters with similar pronunciation
(“papa” v.s “bucks”). On the other hand, “星爸爸” and Starbucks’ “星巴克” both start with
the same Chinese character “星” (which means “star” in English), followed by characters with
similar pronunciation (“爸爸” v.s. “巴克”). Thus, TIPO concluded that “星爸爸Starpapa” verbally and visually
similar to Starbucks’ above cited famous trademarks.
5.
Further, TIPO noted that Taiwan’s
consumers are more familiar with Starbucks’ trademarks, and that the products
and services covered by “星爸爸Starpapa” are related to or associated with those designated by Starbucks’
trademarks. In deed, both are related to drink or food services that fulfill similar
purposes for the consumers.
6. In view of the above, considering the well-known status of Starbucks’ well-known trademarks, the similarity between “星巴克”, “STARBUCKS”, and “星爸爸Starpapa”, the profound recognition of Starbucks’ trademarks, and the overlap of the designated products and services, TIPO determined that the contested trademark shall be invalidated for likelihood of confusion with Starbucks’ well-known trademarks.
Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WFZ4SDNvWVJlYlphWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true
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