Taiwan’s IP Office Rejected HYUNDAI’s Trademark Application for “eGV80”

For its new electric SUV lineup, HYUNDAI MOTOR COMPANY (“HYUNDAI”) filed trademark application for “eGV80” on September 25, 2019 (application no. 108063273, see below), designated for goods in Class 12, including automobile, truck, electric car, hybrid electric vehicle, sports car, sport utility vehicle, and hydrogen fuel cell electric car.

However, Taiwan’s IP Office (“IPO”) denied HYUNDAI’s application, finding “eGV80” not distinctive.

According to Article 29.1.3 of Trademark Act, a trademark that consists of signs that are devoid of any distinctiveness shall not be registered. In this regard, a sign consisting of character and number usually will be perceived as standard, model name, or specification of product or service. For example, when seeing “4WD” used on cars, consumers would think of 4-Wheel Drive. When seeing “MP3” used on music player, consumers would know it refers to “MPEG Audio Layer-3”. When seeing “512MB” used on memory card, consumers would understand it means the memory capacity.

Here, IPO found HYUNDAI’s application “eGV80” consisting of “eGV” and “80”, which is pure combination of character and number. Such combination, when used for automobile, truck, electric car, hybrid electric vehicle, sports car, sport utility vehicle, and hydrogen fuel cell electric car, will be understood as the standard or model name of the vehicle, rather than distinctive sign indicating the source of goods or service provided. Thus, IPO found HYUNDAI’s application shall be denied in accordance with Article 29.1.3 of Trademark Act.

Lastly, it is worth mentioning that HYUNDAI’s applications for its “eGV70” (application no. 108063276) and “eG80” (application no. 108063278) were also denied by IPO based on similar legal basis (i.e., Article 29.1.3). We shall see if HYUNDAI would challenge IPO’s rejections and appeal to the Petitions and Appeals Committee of Ministry of Economic Affairs.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ME1FRmdBZjFTSXJLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true (eGV80)

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ME1FRmdBZjFTSXJ4TWNIODg4Uk1Wdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true (eGV70)

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ME1FRmdBZjFTSW8wanBUR3FwQ2FoZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true(eG80)

UMC and its high-ranking employees were found guilty for infringing Micron’s Trade Secret

Factual Background:

United Microelectronics Corporation (UMC) and Fujian Jinhua Integrated Circuit Co. (JHICC) entered into technology cooperation agreement in January, 2016, where JHICC would provide funding up to US$ 300 million for UMC to research and develop DRAM-related technology. The result of UMC’s development would be co-owned by UMC and JHICC, and the developed technology would be transferred to JHICC for mass production. JHICC allegedly paid UMC US$ 400 million during the development process.

The defendants, Mr. Ho and Mr. Wang, were ex-employees of Micron Taiwan. Both of them came into possession of Micron’s trade secret when they worked for Micron Taiwan.

Mr. Ho, through the internal system, acquired trade secret related to manufacture of DRAM from Micron’s internal server, and then reproduced and stored the same in his personal hard drive. When Mr. Ho resigned from Micron Taiwan on October 15, 2015, Mr. Ho did not delete the trade secret he acquired. Rather, Mr. Ho took Micron’s trade secret with him and joined UMC on November 5, 2015. For his new work at UMC, Mr. Ho reproduced and stored Micron’s trade secret in the laptop UMC assigned to him.

Similarly, when still working for Micron Taiwan, Mr. Wang accessed and acquired trade secret related to manufacture of DRAM. Mr. Wang later on reproduced and stored the acquired trade secret in his personal hard drive, laptop, and then uploaded the same to his Google Drive account in April, 2016. In addition, when Mr. Wang joined UMC, Mr. Wang accessed Micron’s trade secret he stored in his Google Drive through his personal cell phone and laptop assigned to him by UMC, and downloaded the same to his smartphone, laptop, and portal hard drive. During the period of July and August of 2016, in order to facilitate UMC’s research and development of DRAM project with JHICC, Mr. Wang, under instructions of UMC’s Mr. Rong, downloaded Micron’s trade secret and provided Micron’s process parameters and relevant data to UMC’s engineers for subsequent test and design. Based on the information provided by Mr. Wang, UMC was able to save considerable time and cost in developing and designing the manufacture process.

Micron’s Trade Secret:

The confidential information allegedly misappropriated by Mr. Wang and Mr. Ho was related to Micron’s design rules, manufacture process, formula, circuit design, packaging design, chemical composition, model name of equipment for each process phase, and debugging data. This information was confidential in nature, and not publicly accessible for the relevant industries. In addition, the misappropriated information could not be easily acquired. It needs long term investment of cost and labor to research and develop. Thus, businesses that possess this information could be in a more advantageous position than those that do not. With the misappropriated information, businesses like UMC could save costs by expediting its research and testing. Thus, the misappropriated information is eligible for trade secret protection per Taiwan’s Trade Secret Act.

The Offenses Committed by Mr. Ho, Mr. Wang, and Mr. Rong:

Under the Trade Secret Act, the use of trade secret at least includes perusing, reviewing, compiling, and editing the content of trade secret. Here, both Mr. Ho and Mr. Wang had signed agreement with Micron Taiwan, premising not to disclose, misappropriate, or help third party acquire Micron’s confidential information after the expiration of their employment. However, after resigning from Micron Taiwan, Mr. Ho and Mr. Wang took trade secret they acquired to UMC, and perused, used, and reproduced the same for the interest of UMC. Further, Mr. Wang disclosed Micron’s process parameters to UMC’s manager Mr. Rong. As such, Mr. Ho’s unauthorized use and Mr. Wang’s misappropriation and disclosure all constitute violation of Trade Secret Act.

Mr. Rong is UMC’s high-ranking manager, in charge of leading Mr. Ho’s and Mr. Wang’s work performance, and implementing UMC’s joint development project with JHICC. As the supervisor of Mr. Ho and Mr. Wang, Mr. Rong not only failed to make sure they complied with duty of confidentiality, but also turned a blind eye on their misuse of Micron’s trade secret. Additionally, UMC’s general manager, Mr. Chen, also violated UMC’s security protocol by unlocking the USB port of the laptop assigned to Mr. Ho, so that Mr. Ho could access the confidential information he took from Micron by inserting his personal USB stick to the laptop. As such, both Mr. Rong and Mr. Chen failed to take the necessary measure to prevent the misappropriation and misuse of Micron’s trade secret.

Lastly, the district court judge found that part of Mr. Ho's salary came from JHICC, and that Mr. Wang and Mr. Rong were all aware of the fact that their use of Micron’s trade secret was for UMC’s development project with JHICC, and that the result of their research would be transmitted to Mainland China for mass production. Thus, they all infringed Micron’s trade secret with the criminal intent to use said trade secret in Mainland China.

The Penalty:

In view of the above, it is ruled that:

Mr. Ho is guilty for violating Paragraph 1 of Article 13-2 of Trade Secret Act, and shall be subject to imprisonment up to 5 years and 6 months, as well as a fine of NT$ 5 million.

Mr. Wang is guilty for violating Paragraph 1 of Article 13-2 of Trade Secret Act, and shall be subject to imprisonment up to 4 years and 6 months, as well as a fine of NT$ 4 million.

Mr. Rong should be subject to imprisonment up to 6 years and 6 months, as well as a fine of NT$ 6 million.

UMC should be subject to a fine of NT$ 100 million in view of the offenses committed by its employees.

The Cited Articles of Trade Secret Act:

Article 13-1 

Any person committing an act falling under any of the following circumstances for the purpose of an illicit gain for himself/herself or for a third person, or inflicting a loss on the holder of a trade secret shall be sentenced to a maximum of 5 years imprisonment or short-term imprisonment, in addition thereto, a fine between NT$1 million and NT$10 million may be imposed:
1. Acquiring a trade secret by an act of theft, embezzlement, fraud, threat, unauthorized reproduction, or other wrongful means, or using or disclosing a trade secret so acquired.
2. Committing an unauthorized reproduction, usage, or disclosure of a trade secret known or possessed.

Article 13-2

Any person committing a crime prescribed in the first paragraph of the preceding article for the purpose of using the trade secret in foreign jurisdictions, mainland China, Hong Kong, or Macau shall be sentenced to imprisonment between 1 year and 10 years, in addition thereto, a fine between NT$3 million and NT$50 million may be imposed.

Article 13-4

Where the representative of a juristic person, the agent, employee or any other staff of a juristic person or natural person commits any of the crimes prescribed in Article 13-1 or 13-2 in the course of business, not only the actor, but the juristic person or the natural person shall be punished with the fine prescribed in the Article. However, if the representative of a juristic person or natural person has done his/her utmost to prevent a crime from being committed, the juristic person or natural person shall not be punished.

Source:

https://www.judicial.gov.tw/tw/cp-1888-230692-b054f-1.html

Taiwan’s IP Court Ruled that Being Capable Of Practicing A Patent Before the Patent’s Filing Date Is Not Enough For One To Assert Prior Use Defense

In 2018, ALMECO GMBH (“ALMECO”), the German-based world leader in the production of aluminum components and laminates for the architectural, lighting, solar and decorative applications, sued Alanod-Xxentria Technology Materials Co. Ltd. (“Alanod-Xxentria”) and its local distributor in Taiwan’s IP Court, alleging infringement of ALMECO’s I589448 patent, titled “Temperature And Corrosion Stable Surface Reflector” (hereafter ‘448 patent).

ALMECO’s ‘448 patent mainly relates to a layer system comprising:

“a metal substrate on the face of which the following layers are applied in the specified sequence from the inside to the outside:

4) a layer made of a material selected from substoichiometric oxides and oxide nitrates of titanium and zirconium or from metals selected from titanium, zirconium, molybdenum, platinum, and chromium or an alloy using one of said metals or at least two of said metals,

5a) a layer made of a nickel alloy with chromium, aluminum, vanadium, molybdenum, cobalt, iron, titanium, and/or copper as the alloy partner or a metal selected from copper, aluminum, chromium, molybdenum, tungsten, tantalum, titanium, platinum, ruthenium, rhodium, and alloys using one said metals or at least two of said metals, or iron, steel, or stainless steel with the proviso that the layer can only consists of aluminum if the reflector layer 6) is made of aluminum and that in this case, the aluminum of the layer 5a) is sputtered,

6) an optically dense reflector layer made of a highly pure metal,

7) a layer selected from substoichiometric oxides of titanium, zirconium, hafnium, vanadium, tantalum, niobium, or chromium and from metals selected from chromium, titanium, zirconium, hafnium, vanadium, niobium, tantalum, tungsten, molybdenum, rhodium, and platinum and alloys using one of said metals or at least two of said metals,

9) a layer which has a lower refractive index (LI layer) than the directly adjoining layer 10) (HI layer), and

10) a layer which directly adjoins layer 9) and has a higher refractive index (HI layer) than layer 9) (LI layer).”

According to ALMECO, such a patented layer system can be used for example as a surface reflector, preferably in applications using LEDs, in particular MCCOB for LEDs, as a solar reflector, or as a laser mirror, in particular for color wheels in DLP laser projectors.

The IP Court ruled against ALMECO in the first instance, finding the asserted patent claims of ‘448 patent were obvious in view of the cited prior arts. ALMECO appealed, and the appellate panel of IP Court affirmed the finding of the lower court on May 21, 2020, rejecting ALMECO’s appeal. One of the key issues, which is also an issue that has rarely been touched upon in Taiwan’s patent litigation, is whether Alanod-Xxentria may assert prior use defense per Patent Law.

Article 59.1.3 of Patent Law provides that “The effects of an invention patent right shall not extend to the following circumstances:….3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention”. According to Alanod-Xxentria, before the priority date of ALMECO’s ‘448 patent, Alanod- Xxentria has already manufactured product that embodied ALMECO’s ‘448 patent. Based on its internal product document, Alanod- Xxentria alleged that a product with layered structure of TiO2, SiO2, CrOx, Ag, Cu, TiOx, and anodized aluminum, together with its manufacture process, has been disclosed. Thus, Alanod- Xxentria argued that it has been exploiting the same invention or making the necessary preparations for doing such act by manufacturing product that embodies the asserted patent.

However, the IP Court disagreed, finding that in the asserted patent, a single Ag-based reflector layer is adopted, but in its internal document, Alanod-Xxentria adopted double reflector layers made of Ag and Cu. In addition, according to its internal document, a Cr-based layer is adopted for the manufacturing process, while in the asserted patent, ALMECO adopted CrOx. Such differences disproved Alanod-Xxentria’s contention that it has been manufacturing product that embodies the asserted patent.

Although Alanod-Xxentria further argued that based on the relevant prior art references, a person of ordinary skills in the art would easily adjust the ratio of Cu and Ag and accomplish the patented Ag-based layer. However, the IP Court held that “being capable of manufacturing the patented product” does not equal to “practicing the patented invention” or “making necessary preparations for doing so.” For example, although a person is capable of manufacturing a patented product, such a person may still choose not to do so in view of the potential risk of patent infringement. Thus, the appellate panel of IP Court found Alanod-Xxentria’s submitted evidence insufficient to support its prior use defense.

Source: 108-Ming-Zhuan-Shang-Zi No. 24 (IP Court, May 21, 2020) https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,108%2c%e6%b0%91%e5%b0%88%e4%b8%8a%2c24%2c20200521%2c4

“AgRICOLA” is found similar with the Swiss brand “RICOLA”

RICOLA GROUP AG (“RICOLA”), the worldwide famous expert in herb specialties, prevailed in opposition proceeding against “AgRICOLA” in Taiwan’s IP Office (“IPO”).

On August 2, 2017, Yen-Tai International Ltd. (“Yen Tai”) filed trademark application for “AgRICOLA”, designated for use in goods under Class 3 (e.g., cream, shampoo, facial cleansing, conditioner, etc.), Class 5 (e.g., nutrition supplement, baby food, herb tea supplements, etc.), and Class 30 (e.g., coffee, tea, candy, cookie, chocolate, etc.). Yen-Tai’s application was granted on May 1, 2018 (Reg. No. 01913141, see below). RICOLA filed opposition on July 31, 2018, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Taiwan’s Trademark Act.

IPO, after considering arguments and evidence submitted by both sides, found against Yen-Tai based on the following reasons:

1.     Article 30.1.11 of Trademark Act provides that a trademark shall be cancelled if such mark is confusingly similar with other’s famous mark that may cause confusion among the relevant public.

2.     “RICOLA” is originated from the combination of initials “Richterich & Co. Laufen”. The brand “RICOLA”, together with its unique throat lozenge mixed with the natural flavor of 13-herb mixture, has been widely popular in numerous countries in the markets of Europe, Asia, and the America continents for more than 50 years. RICOLA’s cited registered trademarks, including Reg. No. 00085233, 00151331, 00338936, 01208716, 01242891, 01552774, and 01734864, were registered in Taiwan dated back in as early as 1976, and its product is available in multiple sales channels including SOGO, PXMART, Carrefour, Costco, etc. Thus, “RICOLA” as a brand used in throat lozenge has become a well-known trademark in Taiwan.

 

3.     Yen-Tai’s “AgRICOLA” includes the same word “RICOLA”, with minor variations of “A” and “g”. Since “RICOLA” constitutes the major portion of Yen-Tai’s “AgRICOLA” trademark, an ordinary consumer would still find “RICOLA” the most distinctive part and develops stronger impression. Thus, the degree of similarity between “AgRICOLA” and “RICOLA” shall be as least medium.

4.     “RICOLA” has no ordinary meaning and thus is a highly distinctive trademark. Plus, after its continuous use and worldwide marketing, “RICOLA” has become so famous that consumers are more familiar with “RICOLA”.

5.     In addition to throat lozenge, IPO found that “RICOLA” has also been registered in other products under Class 5 and Class 30, such as herb tea, medicated candy, tea, medicated candy for soothing sore throat and coughing, etc. Thus, the IPO also took into consideration that “RICOLA” is registered in diversified products and may be used in different goods.

6.     Yen-Tai argued that there are other registered “agricola” trademarks, and that “argicola” is ordinary word, so “AgRICOLA” is distinguishable from “RICOLA.” However, the IPO noted that by particularly inserting “g” between “A” and “RICOLA”, Yen-Tai actually made “RICOLA” more noticeable in its registered “AgRICOLA” trademark. As such, Yen-Tai’s arguments are not persuasive.

Based on the above, the IPO found that Yen-Tai’s “AgRICOLA” is similar with the well-known trademark “RICOLA,” and that since the two trademarks are registered in similar goods, it is likely that an ordinary consumer will be confused and mistakenly believe that the two marks represent the same source of goods or that they are associated trademarks. Therefore, “AgRICOLA” shall be cancelled accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UDc5UStsM3psc0hKTVYrSURuM1lOZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office: Accor’s Hotel Brand “Novotel” Is A Well-Known Trademark

On July 30, 2018, a Mr. Liang filed application for trademark “NOVOTEL” for use in goods such as handbag, purse, briefcase, belt, etc. Mr. Liang’s application was granted on March 16, 2019 (Reg. No. 01975799, shown below). Accor filed opposition on June 14, 2019, and Taiwan’s IP Office (“IPO”) found for Accor.

Accor alleged that Mr. Liang’s trademark shall be cancelled due to violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. More specifically, Accor stated that its registered trademarks for its Novotel Hotel, including the word mark “Novotel” (Reg. No. 00162720, shown below), are famous trademarks after years of service and marketing in Taiwan, and that Mr. Liang’s attempt to register a highly similar word mark is out of bad faith.

IPO found for Accor, determining that Mr. Liang’s trademark should be cancelled due to being identical with Accor’s famous trademark, and will cause confusion in the relevant public.

1.      Article 30.1.11 of Trademark Act 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 or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

2.      With regard to Accor’s registered word mark “Novotel”, IPO noted that there is sufficient evidence, including continuous news reports, advertisements, magazines, and awards, supporting the finding of the well-known status of Accor’s “Novotel” trademark.

3.      After confirming Novotel as a famous trademark, the IPO went on to find that Mr. Liang’s opposed trademark is identical with Accor’s famous trademark. The similarity is too high that ordinary consumers may mistakenly believe that the two marks represent the same source of service or goods.

4.      Accor’s registered “Novotel” is unique and highly distinctive. According to the records, the IPO found that other than Mr. Liang and Accor, there is no one else registering the same word mark.

5.      Although Mr. Liang’s opposed trademark is used for goods such as purse, handbag, belt, leather goods, etc., the IPO was aware of Accor’s highly diversified business. For example, in its Novotel Hotel, Accor also provides fashionable goods like leather products for its customers. Thus, the goods designated by Mr. Liang’s opposed trademark may be considered relevant to the service provided under Accor’s Novotel trademark.

In view of the fact that Accor’s Novotel is a well-known trademark, that Mr. Liang’s trademark is highly similar with Accor’s trademark, and that there is likelihood of confusion caused by the similarity between the two trademarks, IPO sided with Accor and determined that Mr. Liang’s 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=XpJ13RyT4bmUrRzgrMjliVGZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office affirms “Tik Tok” as a well-known trademark

Bytedance Ltd. (“Bytedance”), the owner of registered “Tik Tok” trademark in Taiwan, filed opposition against another registered trademark (Reg. No. 02005514, see below) , alleging violation of Article 30.1.11 and 30.1.12 of Trademark Act.

The opposed trademark was filed on January 21, 2019, designated for use in internet auction, supermarket, department store, convenience store, shopping mall, online shopping, clothing, drink, and other retail service. The opposed trademark was granted on August 16, 2019. Bytedance filed opposition on November 14, 2019.

Taiwan’s IP Office (“IPO”), after considering the evidence and records submitted by Bytedance, determined the opposed trademark should be cancelled due to similar with other’s well-known trademark and may cause confusion among the relevant public.

1. Bytedance’s “Tik Tok” is a well-known trademark:

IPO, upon reviewing all the materials submitted by Bytedance, acknowledging that “Tik Tok” is a highly popular app that supports video-sharing network service. According to records, since 2016, the app has been downloaded and used by more than 500 million users in more than 50 countries around the world. Its short form video sharing service, together with the creative interface and social media platform, made “Tik Tok” so popular among the young generation. Although it was introduced to Taiwan in 2018, such popular app immediately became a hit and every month there are more than 3 million active users on the digital platform. Thus, when the opposed trademark was filed on January 21, 2019, Bytedance’s “Tik Tok” has become a well-known trademark in Taiwan.

2. The opposed trademark is highly similar with Bytedance’s registered trademark:

Both Bytedance’s “Tik Tok” trademark (Reg. No. 01980261, see below) and the opposed trademark share similar character “Tik Tok”. The musical note presented in the opposed trademark is also highly similar with Bytedance’s another registered trademark, which features its icon (Reg. No. 01982062, see below).

3. Bytedance’s “Tik Tok” trademark is highly distinctive:

“Tik Tok” has no specific meaning. Besides, Bytedance’s “Tik Tok” is designated for service such as software and app service, VPN service, internet data access service, live streaming service, Saas and ASP service, and cloud computing, which have no relation with the word “Tik Tok.” As such, “Tik Tok” is a trademark having high level of distinctiveness.

4. “Tik Tok” is also used in similar service:

Although the opposed trademark is used in retail service, Bytedance’s business is quite diversified. Plus, there is evidence showing Bytedance’s “Tik Tok” is also used in apparel and relevant merchandise. Further, both Bytedance’s “Tik Tok” and the opposed trademark (e.g., online shopping and retail) are designated for service concerning internet access. At a time when consumers are used to shopping online and purchasing products through internet transactions, these services are considered similar and correlated with each other.

Based on the above, the IPO found the opposed trademark should be cancelled due to similar with Bytedance’s well-known trademark, which may cause confusion amount the relevant consumers that there is license, collaboration, or other form of relationship between the owners of the two trademarks.

It is also worth noticing that Bytedance’s “Tik Tok” trademark was filed on May 31, 2018, which is only about 8 months earlier than the filing date of the opposed trademark. However, IPO still found “Tik Tok” was already a famous trademark in Taiwan at the time when the opposed trademark was filed. Thus, the decisive factor for gaining the status of a well-known trademark seemingly is not how long a trademark has been put in use, but how many records and materials have been submitted to prove the public’s recognition and popularity of a trademark.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cU1mSFRUTTR6bDR6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“APPLE TREE MOBILE SHOP” Was Found Similar With APPLE Inc.’s Trademark

Cell phone repairers better be careful.  When designing the trademark, repairer may like to highlight the brand of the smart phone his or her service covers. While it may help business, not every smart phone company would be happy to see its brand become part of other’s trademark, especially APPLE Inc.(“APPLE”)

On June 27, 2018, a local cell phone repairer filed trademark application for “APPLE TREE MOBILE SHOP (with drawing)”(Reg. No. 01972030, as shown below). Such trademark was granted on February 16, 2019, designated for service including cell phone or communication equipment repair or installation. APPLE filed opposition on May 14, 2019, and the Intellectual Property Office (“IPO”) rendered decision on April 7, 2020, finding the opposed trademark should be cancelled.

APPLE held the position that:

1. Its series trademarks, including the word mark “APPLE” (shown below), are famous trademarks. Since the opposed trademark has the same characters “APPLE”, the opposed trademark is highly similar with APPLE’s famous trademark.
2. The wrench presented in the opposed trademark features a smart phone drawing with APPLE’s famous “HOME BUTTON”, which is widely adopted in APPLE’s popular iPhone and iPad products. Such drawing may further lead the consumer to draw connection with APPLE’s famous products and trademark upon seeing the opposed trademark.
3. The service designated by the opposed trademark cover phone installation and repair, communication equipment installation and repair, internet setting, etc. They are relevant or similar with those designated by APPLE’s famous trademark, because APPLE’s products and services have been quite diversified. For example, APPLE’s word mark is also designated for service such as computer and hardware installation or repair.
4. Such high degree of similarity, plus the fame of APPLE’s trademark and similarity of service designated by the opposed trademark, enhance the inference that the application of the opposed trademark should be based on intent to imitate, and was not filed out of good faith.  

The owner of the opposed trademark replied that:

1.     In addition to the foreign language “APPLE TREE”, the opposed trademark further contains the drawing of a wrench. The overall appearance, and phonetic of the opposed trademark shall be different from those of APPLE’s.

2.     Consumer, when seeing the opposed trademark, would figure that the drawing features a wrench, rather than APPLE’s smart phone products.

3.     Besides, apple refers to a kind of fruit, which is not highly distinctive. Aside from APPLE, there are other registrants whose trademarks also contain this word. Thus, consumers should be quite familiar with such word mark and will be able to distinguish the opposed trademark from APPLE’s asserted trademark. In sum, consumers will not be confused simply because the two marks bear the same word “APPLE”.

The IPO found for APPLE, cancelling the opposed trademark on the ground of Article 30.1.11, which provides that a trademark shall not be registered if such mark is identical to or similar with other famous mark so that it may cause confusion to the relevant public or damage the distinctiveness or reputation of the famous mark.

1. “APPLE” is a famous trademark:

To this end, IPO finds that there are voluminous records supporting APPLE’s assertion. APPLE registered its trademark since as early as 1977, and used “APPLE” and “APPLE LOGO” as trademarks on computer product and its related accessories. Over time, the products or services covered by these trademarks have expanded to cover software, internet, multi-media products, education service, clothing, and stationary. The successful delivery of service and products such as “iTunes”, “iPod”, “iPhone”, and “iPad” further help APPLE becomes one of the greatest global brands.

2. The opposed trademark is similar with APPLE’s famous trademark:

The opposed trademark presents similar word mark “APPLE”. Although there are other elements, such as “MOBILE SHOP”, a wrench featuring a cell phone inside, and the word “Tree”, these additional elements are not distinctive. The most appealing portion is still the word “APPLE”, which is identical to APPLE’s famous word mark. Further, in the wrench, there is a drawing of cell phone featuring APPLE’s famous “home button”, which gives the impression that the mark has something to do with repairing APPLE’s products. Conceptually, the opposed trademark is similar with APPLE’s famous work mark.  

3.     The strength of APPLE’s trademark:

Although the word “apple” refers to ordinary fruit, such word has no bearing with and does not describe the nature of the goods or service the word mark is designated to use. Thus, consumers would immediately recognize “APPLE” as the identifier of source of the goods or service. Plus, APPLE has been using the word mark for more than 40 years. Even if the degree of similarity is low, ordinary consumers would immediately think of APPLE’s famous trademark upon seeing the opposed trademark.

4. The knowledge of the relevant consumers to the opposed trademark:

While APPLE has submitted sufficient records supporting the finding of famous trademark, the evidence the owner of the opposed trademark provided was not enough. There was no record with respect to the market share, sales, and revenue in association with the goods or service using the opposed trademark. Although the owner of the opposed trademark submitted some evidence of trademark use, such as Facebook fan pages and Google search results, these materials either were generated after the application date of the opposed trademark, or have no date at all. Thus, IPO could not find the opposed trademark was well-known among the relevant consumers when it was filed for registration.

4.     The registration of the opposed trademark is not based on good faith:

Considering the well-known status of APPLE’s trademarks, and the design of the opposed trademark that may easily make ordinary consumers think of APPLE’s goods or service, the IPO found the opposed trademark probably was not registered out of good faith.

Based on the above, the IPO sided with APPLE, determining that the opposed trademark is similar with APPLE’s famous trademark, which may confuse and mislead the relevant consumers into believing that there is license, partnership, or other form of contractual relationship between the owner of the opposed trademark and APPLE. Thus, the opposed trademark should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cE5mQW9ybys0VHJ4Szdyd1JzbW5rZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true