LV Successful In Cancelling Similar “VUIT TON” Trademark in Taiwan’s IP Office

LOUIS VUITTON MALLETIER (“LVM”), the registered owner of “LOUIS VUITTON” and “VUITTON” trademarks in Taiwan, filed opposition against Rise Edge Limited Taiwan (“Rise Edge”), alleging Rise Edge’s trademark (Reg. No. 01940391, see below) would cause dilution to the distinctiveness of its famous trademarks. On March 31, 2020, Taiwan’s Intellectual Property Office (“IPO”) sided with LVM.

Based on the records of IPO, Rise Edge filed the contested trademark on January 8, 2018, and designated such trademark for service in class 43, including cuisine service such as Japanese food restaurant, Japanese noodles, drink, shabu-shabu (Japanese-style hot pot), ramen, Japanese bar, etc. Rise Edge’s application was granted on September 16, 2018. LVM filed opposition with IPO on December 17, 2018, citing violation of Article 30.1.11 of Trademark Act, which prescribes that a trademark shall not be registered if such 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.”

The IPO found Rise Edge’s contested trademark may dilute the distinctiveness of LVM’s “LOUIS VUITTON” and “VUITTON” trademarks.

1. LVM claimed, and the IPO agreed, that LVM’s registered “LOUIS VUITTON” and “VUITTON” trademarks“ are well-known trademarks (see below). The trademark “LOUIS VUITTON” is based on the name of its founder, and has been put in use by LVM since as early as 1896. Based on the records of trademark use and other supporting judicial and administrative determinations at hand, IPO found both “LOUIS VUITTON” and “VUITTON” are highly distinctive and famous in fashion goods such as apparel, clothes, bag, watches, accessories, hats, and boots after LVM’s continuous use and successful marketing throughout the world.                                          
2. With regard to similarity, the IPO determines that Rise Edge’s trademark is highly similar with LVM’s aforesaid famous trademarks, for the characters “VUITTON” are also presented and clearly discernible in Rise Edge’s contested trademark. Although Rise Edge tried to distinguish its trademark by disconnecting “VUIT” from “TON”, and replacing the “O” in “TON” with a piggy nose, IPO considers such difference is insufficient to make Rise Edge’s trademark distinguishable from LVM’s famous trademarks.
3.  Besides, the IPO notes that no matter it is “VUITTON” or “LOUIS VUITTON”, one can hardly find any other similar trademark used by third party in other different goods or services. In other words, LVM’s aforesaid trademarks are not only famous, but also unique. Thus, LVM’s famous trademarks shall be entitled to higher degree of exclusivity.
4. The more well-known a trademark becomes, the more likely that its distinctiveness will be diluted by other similar trademark, even when the designated goods or service is different, because the well-known trademark is so popular and widely recognized by the relevant consumers. If Rise Edge’s contested trademark is not cancelled, its continuous use may gradually erode and weaken the distinctiveness and uniqueness of LVM’s cited famous trademarks.

Based on the above reasons, the IPO concluded that Rise Edge’s contested trademark shall be cancelled in accordance with Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cnJuYVJUNkxPckFEVDh2YmlZR3N5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

 

“NIVEA” Prevails In Opposition Proceeding Against Convatec’s “MEVIA”

On November 15, 2018, BEIERSDORF AG (“BEIERSDORF”), the registrant of “NIVEA” trademark in Taiwan (see below), filed opposition against CONVATEC INC.’s (“CONVATEC”) registered trademark “MEVIA” in Taiwan’s Intellectual Property Office (“IPO”), alleging violation of Article 30.1.11 of Taiwan’s Trademark Act. On March 18, 2020, IPO sided with “NIVEA”.

(Reg. No. 000039212)

The opposed trademark, “MEVIA” (see below), was filed on June 6, 2017, and granted on August 16, 2018, designated for goods under class 10 (mainly covers medical and diagnostic device) and class 5 (mainly covers medical product such as wound dressing, gel, and bandage). BEIERSDORF filed opposition against MEVIA for goods under class 5, claiming similarity between the two trademarks may raise confusion among the relevant consumers.

(Reg. No. 01934233)

The IPO found “MEVIA” should be cancelled based on the following reasons:

1.     First of all, “NIVEA” is a famous trademark. Records shows that BEIERSDORF has been using “NIVEA” for more than 100 years. In as early as 1905, BEIERSDORF had registered “NIVEA” for its sunscreen and body lotion product, and its first NIVEA trademark was registered with Taiwan’s IPO in 1970. Through its continuous use, NIVEA has become a famous trademark for skin care products prior to the filing date of “MEVIA” trademark (June 6, 2017).

2.     Besides, NIVEA and MEVIA are similar. Both trademarks present the combination of characters “E”, “V”, “I”, and “A”, with different initial character and different sequence. Such differences are minor, and a consumer with ordinary degree of care may still find the two trademarks similar.

3.     Further, NIVEA is highly distinctive, because it bears no relation with its designated goods such as body cleansing, beauty or cosmetic products. Comparing with MEVIA, NIVEA is more famous and should be given more favorable light when it comes to protectability.

4.     In addition, there is evidence showing that BEIERSDORF has expanded its business to medical product like medical bandage, ointment, etc., and acquired numerous trademark registrations for similar goods under class 5. Thus, there is likelihood that consumers may mistakenly believe that the two trademarks represent the same product, or there exists license or other business relationship between BEIERSDORF and CONVATEC.

In light of the above, the IPO found for “NIVEA” and ruled that “MEVIA” should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U0ZTNkhJMTdITkx4TWNIODg4Uk1Wdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s Intellectual Property Office found “Skyrover” similar with Jaguar’s famous “RANGE ROVER” trademark

On March 12, 2020, Taiwan’s Intellectual Property Office (“IPO”) denied trademark application for “Skyrover” (application no. 108046610, see below), which is applied for use in goods including wallet, umbrella, suitcase, handbag, briefcase, schoolbag, etc.

According to IPO, the trademark application is denied for being similar with Jaguar Land Rover Limited’s (“Jaguar”) registered trademarks (see below), which may cause confusion among relevant consumers.

(Reg. No. 720458)

 
(Reg. No. 02019128)

(Reg. No. 096055056)

The legal ground cited by IPO is Article 30.1.10 of Trademark Act, which provides that a trademark shall not be registered for “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.”

In this case, the IPO first found that the applicant’s “Skyrover” and Jaguar’s registered trademarks all share similar character “ROVER”, which are similar with each other. Although the applicant combines “ROVER” with another word “sky”, such difference is minor, and consumers may still find “Skyrover” similar with Jaguar’s registered trademarks.

In addition, the goods covered by Jaguar’s registered trademarks are not limited to car or automotive parts only, but also include goods such as shopping bag, backpack, camping bag, smartphone case and tablet case, which serve similar function with goods designated by applicant’s “Skyrover”. Hence, the goods designated by “Skyrover” are similar with those designated by Jaguar’s registered trademarks.

Further, pursuant to IPO, Jaguar’s registered trademarks are highly distinctive, because they bear no relation with the nature or function of their designated goods. In light of such high degree of distinctiveness, the IPO posited that it is particularly likely that consumers may confuse applicant’s “Skyrover” with Jaguar’s registered trademarks.

Based on the aforesaid reasons, IPO denied the trademark application for “Skyrover” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OVhjeDJ5WGk2NzNkZS9FcHpMWjlvQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IPO: Registration of Three-Dimensional Trademark Requires Proof of Acquired Distinctiveness

When you see a delicate glass cup with the shape of a cutty Shiba Inu inside, would you consider the cup a trademark? Well, Taiwan’s Intellectual Property Office (“IPO”) said: ”No.”

In a trademark application filed by Redliuli Limited (“Redliuli”), IPO was asked to determine whether Redliuli’s 3D trademark (Application No. 108034910), a glass container with an artistic design of a Shiba Inu inside (as shown below), designated for use in goods like cup, wine glass, liquid container, etc., would meet the requirement of distinctiveness for trademark registration.

In the end, IPO denied Redliuli’s application, because:

1.     According to Article 18.2 and 29.1.3 of Trademark Law, trademark must be distinctive, and a mark merely consisting of non-distinctive elements shall not be registered. As such, three-dimensional shape, like other word, color, or symbol, must be distinctive in order to be qualified for trademark registration.

2.     However, it is relatively more difficult for one to register three-dimensional trademark, especially when the three-dimensional trademark refers to the shape of a product or product package. It is because consumers tend to view the shape of product or product package decorative or functional. For example, in a case where, as here, a design of a Shiba Inu is used inside a glass bottle, consumers are more likely to perceive such a design as a decorative feature, instead of a sign that identify the source of specific goods or service. Thus, for a three-dimensional mark featuring the shape of a product or product package to be registered as trademark, the applicant has to prove said mark has acquired secondary meaning.

3.     In this case, Redliuli argued that its 3D trademark features a high quality cup, involving artistic skills and aesthetic element. Therefore, ordinary consumers would pay higher attention, and are likely to view such a design, i.e., a glass cup with the shape of a Shiba Inu inside, a symbol that identify the source of specific goods. However, IPO disagreed, and ruled that simply because a product demonstrates impressive quality or requires unique skills to manufacture does not necessarily make the product become distinctive. Redliuli still needs to produce relevant evidence, such as records of trademark use, to prove its 3D trademark has acquired secondary meaning.

4.     Since Redliuli produced little evidence showing its sales revenue and the volume of its trademark use, the IPO found the records insufficient to prove that Redliuli’s 3D trademark has acquired secondary meaning. Hence, Redliuli’s application was denied by the IPO.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RnBlNGR1eDY5eHJkNUY5RktQTWY1UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Well...Taiwan’s IP Office Also Knows the Bonsai Bucket Bag

In Taiwan, for a mark to be protectable under Trademark Act, such a mark must be granted by and registered with Taiwan’s Intellectual Property Office. As such, if a foreign brand does not act quickly enough, sometimes it may find its trademark already being registered by someone else in Taiwan, which makes the brand be in a disadvantageous position.

This is what “could” have happened to “Simon Miller”, the Los Angeles-based fashion brand that is well-known for its Bonsai Bucket Bag in 2016 (https://www.whowhatwear.com/emma-watson-simon-miller-bag). Although it had become famous and gained considerable popularity in the fashion industry, “Simon Miller” did not file trademark registration in Taiwan. On December 21, 2017, a trademark application was filed by a third party, seeking trademark registration for the word mark “Simon Miller” (See below) in Taiwan, designated for goods such as bag, purse, backpack, suitcase, shopping bag, etc.

                                                        Application No. 106081347

Good for Simon Miller and bad for the unknown applicant, there is legal ground for Taiwan’s Intellectual Property Office (“IPO”) to protect the foreign brand and deter suspicious free-rider. Article 30.1.12 of Trademark Act provides that a trademark registration shall not be granted if such trademark “being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application.”

Here, Taiwan’s IPO found the trademark application subject to Article 30.1.12, because:

1.     Before the trademark application was filed, “Simon Miller” as a trademark had already been widely used in products like the Bonsai Bag and the Lunch Bag, which were all highly successful and well-known in the relevant markets, including Taiwan.

2.     “Simon Miller” is not a common or ordinary word in Taiwan. However, the applicant sought to trademark exactly the same word, and intended to use in similar goods such as shopping bag, purse, hand bag, etc. Such similarity could not be explained as “pure coincidence.” Rather, such application is made based on attempt to exploit the earlier used trademark with intent to imitate.

Based on the totality of circumstance, the IPO denied the application accordingly. Clearly, for foreign brand that find its trademark registered by bad-faith imitator, Article 30.1.12 of Trademark Act is a feasible avenue. Of course, instead of seeking ex post remedy when finding one’s trademark already taken by someone else, filing trademark application as soon as possible should always be the better way to protect one’s brand in Taiwan.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RnBlNGR1eDY5eHF4Um9yc1NaeW9BQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

個人於社區大廳、大門以及電梯等公共領域之行動舉止，未必具有合理隱私的期待，若遭公開或為他人所知悉，不當然具備違法性

本案原告為大來賞社區住戶，主張被告身為社區總幹事，竟然未經原告同意，擅自將含有原告畫面的監視器檔案，依桃園市政府警察局桃園分局之指示，交予第三人供案件調查之用，已侵害原告隱私，致生精神上痛苦，故主張依民法第184 條第1 項前段、第2 項、第185 條、第195 條第1 項前段及個資法第28條、第29條第1 項等法律關係，請求被告賠償精神慰撫金新臺幣50萬元。被告抗辯其確實有依警察局來函交付大樓監視器檔案，但此舉是依警察局的要求而提供資料，並無侵害原告權利。

法院認為：

1.     首先，隱私權之保護，必以主張隱私權之人對於該隱私有合理之期待為原則，尚不得漫為主張。而所謂隱私之合理期待，應就個案判斷。個人之行動舉止，於私領域空間，固然係受絕對保護，惟個人於公共領域之行動舉止，並非發生於私領域空間，則如此部分之公開或為他人知悉、為個人同意或可得而知者，即難謂此等對隱私權造成之侵害，具有違法性。

2.     經調查，法院發現系爭監視器檔案所錄得之畫面，係拍攝大來賞社區之大廳、大門以及電梯等處。法院認現代都市生活人口密集，居住空間多為公寓大廈型態之集合式住宅，則住戶間就共用空間之隱私權保障，即應依一般社會大眾對生活隱私之合理期待程度為判斷，而大來賞社區裝設之監視器係拍攝社區大廳、大門以及電梯等處，目的應為管制人員進出、保障住戶安全所為必要之蒐證，而前開監視器所拍攝之處所均為社區全體住戶或得以進入該大樓之人隨時可能使用，應屬不特定人或多數人得共聞共見之場所，此是否屬於一般社會大眾所合理期待具有私密性、非公開活動之私生活領域，已有可疑。

3.     況且，本件被告是依照警察局調查作業的需求而提供監視器檔案，此有警察局函文以及該案員警到庭作證可稽。足見被告提供系爭監視器檔案係基於桃園市政府警察局之要求始然，並非無故提供前開資料予毫無關係之第三人使用，且民眾基於信賴具有國家公權力地位之偵查機關要求提供證據資料供案件偵辦之用，理應合理期待此係合乎法律之規定、而無侵害他人權利之虞，就此觀之，難認被告提供系爭監視器檔案予警局所指定之人之舉，係故意或過失之行為而侵害原告之權利。

基於上述理由，法院認為原告依民法第195 條第1 項前段、個資法第28、29條等法律關係，請求被告賠償其因隱私權受侵害之非財產上損害，於法無據。

資料來源：桃園簡易庭 108 年桃簡字第 1372 號民事判決(https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=TYEV,108%2c%e6%a1%83%e7%b0%a1%2c1372%2c20200306%2c1 )

APPLE QUEEN CANNOT SAVE HER APPLE

In a previous post of TIP (see https://tipnlaw.blogspot.com/2020/01/watch-out-leaf-may-be-enough-for.html), we discuss that APPLE Inc.’s trademarks are so famous that even an apple leaf would be enough for Taiwan’s Intellectual Property Office (“TIPO”) to find a trademark similar with APPLE Inc.’s logo. In a recent case, TIPO cancelled another trademark due to similarity with APPLE Inc.’s trademarks. This time, the cancelled trademark is “APPLE Queen.”

According to TIPO’s records, Mr. Chen, legal representative of GREATWONDER INTERNATIONAL TRADING CO., LTD. (“Great Wonder”), obtained trademark registration for “APPLE Queen” (Reg. No. 01880025, see below) on November 16, 2017, designated for use in goods such as purse, briefcase, handbag, card holder, umbrella, waist pack, backpack, etc. APPLE Inc. filed opposition on February 14, 2018, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

APPLE Inc. argued that the opposed trademark “APPLE Queen” and its trademarks “APPLE” (Reg. No. 01457997) and “APPLE LOGO” (Reg. No. 01070447, 01620273) all feature the characters and image of an apple (see below), so the opposed trademark should be found highly similar with its famous trademarks. Besides, the designated goods of the opposed trademark are also similar with those of APPLE Inc.’s asserted trademarks. 

The trademark holder argued that apple is just usual term that is commonly used by ordinary people, so it will never cause confusion with APPLE Inc.’s trademarks. Besides, the “APPLE Queen” trademark has another stylized apple image, featuring his idea that the leather he uses in the designated products are made of apple peel. As such, the visual image, the concept, and the designated goods of the opposed trademark are different from APPLE Inc.’s asserted trademarks.

TIPO found for APPLE Inc., reasoning that:

1.     Firstly, Article 30.1.11 of Trademark Law provides that “A trademark shall not be registered if …. being 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.”

2.     APPLE Inc.’s asserted trademarks are famous trademarks in Taiwan. APPLE Inc. has obtained numerous trademark registrations in Taiwan since as early as 1983, and the status of its famous trademark has been recognized and affirmed in prior IP Court’s decision and TIPO’s dispositions.

3.     Both the opposed trademark and APPLE Inc.’s asserted trademarks share similar characters “apple,” and demonstrate similar image of apple. As such, there is similarity between the opposed trademark and APPLE Inc.’s asserted trademarks. Although Mr. Chen tried to distinguish the opposed trademark by referring to the leather used by his products, such difference pertains to one’s own idea behind a trademark, and is not relevant when determining similarity of trademark.

4.     In addition, APPLE Inc.’s trademarks are highly distinctive and have been used for a very long time. Due to the high degree of distinctiveness and familiarity, APPLE Inc.’s trademarks are vulnerable to confusion even when the degree of similarity is relatively low. Moreover, compared to the voluminous records submitted by APPLE Inc., there is little evidence provided by Mr. Chen to support the actual use of the opposed trademark.

5.     Additionally, the business of APPLE Inc. is highly diversified, and the asserted trademarks are also designated in similar goods such as credit card holder, sports backpack, wallet, etc. It is likely that APPLE Inc. will enter this business field, and such likelihood should be taken into consideration when evaluating whether there is likelihood of confusion.

6.     Lastly, evidence shows that Great Wonder, the company which Mr. Chen is legal representative, also does business in IT service. It is highly likely that Mr. Chen was aware of the existence of APPLE Inc.’s asserted trademarks when filing application for the opposed trademark. As such, Mr. Chen’s filing probably was not based on good faith. 

In view of the well-known status of APPLE Inc.’s trademarks, the similarity between the opposed trademark and APPLE Inc.’s famous trademarks, the diversification of APPLE Inc.’s business, the high degree of distinctiveness of APPLE Inc.’s trademarks, and the lack of good faith when the opposed trademark was filed for application, TIPO found the opposed trademark should be cancelled in accordance with Article 30.1.11 of Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UEdVSUZUa25LODR4VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true