On March 12, 2025, the Petitions and Appeals
Committee of Ministry of Economic Affairs (“Committee”) affirmed the findings
of Taiwan’s IP Office (“TIPO”), concluding that Apple Inc.’s (“Apple”) trademark
application “APPLE AFTERBURNER” should be denied due to similarity with SEGA Corporation’s
(“Sega”) “AFTER BURNER CLIMAX” and “AFTER BURNER” (no. 01213886 and no. 01213887,
see below).
Apple Inc.’s application for “APPLE AFTERBURNER”
(application no. 108070112, see below) was filed on October 25, 2019, designating computer
cards used to accelerate video performance. Apple’s application was denied on
September 26, 2024, by TIPO due to similarity with Sega’s aforesaid trademarks.
Apple challenged TIPO’s denial to the Committee, arguing TIPO’s denial was
erroneous in failing to take into consideration Apple’s strong brand, and that consumers
are more familiar with Apple’s trademark.
The Committee found no error in TIPO’s decision
to deny Apple’s trademark application:
1.
On similarity, the Committee
agreed with TIPO that both Apple’s and Sega’s trademarks share the element “AFTERBURNER”,
which is the dominant part of the trademarks. Although there are some differences
such as the additional “APPLE” in Apple’s application, the space between “AFTER”
and “BURNER” and the additional “CLIMAX” in Sega’s cited trademarks, these differences
are deemed minor. The Committee opined that ordinary consumers would still
consider “APPLE AFTERBURNER” conceptually, verbally, and visually similar to
Sega’s “AFTER BURNER CLIMAX” and “AFTER BURNER”.
2.
The Committee further noted that
Sega’s cited trademarks are registered for computer and video game software, which
are related to the products designated in Apple’s trademark application. Both are
peripheral products associated with computers that serve supplemental or
associated purposes. Although Apple argued that the actual accelerator cards it
supplies are only available to users of Apple’s Mac Pro products, making confusion
unlikely. However, the Committee found such argument misplaced, emphasizing that
when evaluating registrability of a trademark, the analysis of product
similarity is based on the products designated in the trademark applicant, not
the trademark applicant’s actual commercial practices. Apple’s arguments
seemingly conflate the two.
3.
While Apple argued that its trademark
is more famous and deserves stronger protection, the Committee found such
contentions lack evidentiary support. Apple did submit some records, including
news reports and product information. However, the Committee consider these
records, at best, prove that Apple does supply accelerator card products, but insufficient
to show the trademark “APPLE AFTERBURNER” has become well-known among the
relevant consumers.
4.
In view of the above, given that
the similarity between Apple’s “APPLE AFTERBURNER” and Sega’s cited trademarks
is high, that Apple’s designated products overlap with those designated by Sega’s
trademarks, and that Sega’s “AFTER BURNER” possesses considerable
distinctiveness, the Committee concluded that allowing Apple’s trademark application
may cause confusion with Sega’s cited trademarks. As such, the Committee dismissed
Apple’s appeal.
Source:
TIPO’s denial:
Committee’s decision:
沒有留言:
張貼留言