2025年3月8日 星期六

TART OPTICAL ENTERPRISES LLC secured its win against “Julius Tart” trademark before the Petitions and Appeals Committee

On March 3, 2025, the Petitions and Appeals Committee (“Committee”) of the Ministry of Economic Affairs affirmed the determination made by Taiwan’s IP Office (“TIPO”), which found that the contested trademark “Julius Tart” shall be invalidated due to likelihood of confusion with “TART” trademark (no. 01481575, see below), a popular glasses brand registered and owned by TART OPTICAL ENTERPRISES LLC (“Tart Optical”) since 2011 in Taiwan.  

The contested trademark, “Julius Tart” (no. 02157696, see below), was filed by a Japanese company, THE LIGHT CO., LTD. (“The Light”), on February 25, 2021, and granted on August 1, 2021, designated for use in products in Class 9, including eyeglass frames, eyeglass components, eyeglass stands, lens, sunglasses, eyeglass cases, etc. On September 7, 2022, Tart Optical filed invalidation action against “Julius Tart”, citing, among the others, violations of Article 30.1.10 and 30.1.11 of Trademark Act.

On August 30, 2024, TIPO sided with Tart Optical based on Article 30.1.10 of Trademark Act, finding “Julius Tart” confusingly similar to the cited “TART” trademark. The Light appealed, contending that “Julius Tart” should be dissimilar from Tart Optical’s “TART” because of its different style and font size, that “Julius Tart” has been in use for some time and should be able to co-exist without causing confusion, and that its registration of “Julius Tart” was supported and authorized by Mr. Richard Tart, the legitimate successor of the family of Mr. Julius Tart, who founded Tart Optical in 1948.

The Committee did not find The Light’s arguments persuasive. In its determination denying The Light’s appeal, the Committee reasoned that:

1.      On similarity, TIPO was correct to find “Julius Tart” similar to “TART”. “Tart” was the dominant portion of “Julius Tart” that may form visual, verbal, and conceptual similarity with Tart Optical’s “TART”. The presence of “Julius” and variations of font size, letter case, and style were minor differences that are insufficient to make The Light’s “Julius Tart” distinguishable from “TART”.

2.      On the designated products, both trademarks cover products related to eyeglasses and its components that serve similar function and purpose to correct eye’s vision. As such, The Light’s “Julius Tart” was designated for use in goods that are similar to those covered by Tart Optical’s “TART”.

3.      The Light submitted evidence of trademark use and specifically argued that consumers in Taiwan shall be more familiar with “Julius Tart”. The Committee disagreed, finding The Light’s supporting evidence, at best, was only able to show it has used “Julius Tart” for its products sold in Taiwan prior to the filing date of its contested trademark. The Committee pointed out that without records showing the market share, revenue, and marketing expenses, The Light’s evidence such as webpages, social media posts, worldwide trademark registrations, news reports, and YouTube videos, was insufficient to prove local Taiwanese’s familiarity with “Julius Tart”.

4.      While The Light argued that its registration of “Julius Tart” was authorized and based on good faith, the Committee found this factor secondary, and, even assuming to be true, was insufficient to neutralize the strong inference of likelihood of confusion caused by the similarity between the two trademarks and the overlap of the designated products.

In view of the above, the Committee determined that TIPO was not erroneous in finding likelihood of confusion between “Julius Tart” and “TART”, and affirmed TIPO’s finding accordingly.

 

Source:

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bkpQOVNQK1ZMeG1Zd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

The Committee’s decision:    

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=H01110084&docDate=114/03/04&type=1&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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TART OPTICAL ENTERPRISES LLC secured its win against “Julius Tart” trademark before the Petitions and Appeals Committee

On March 3, 2025, the Petitions and Appeals Committee (“Committee”) of the Ministry of Economic Affairs affirmed the determination made by T...