“adiader” is found similar with “adidas” by Taiwan’s IP Office

On June 20, 2020, Taiwan’s IP Office (TIPO) denied trademark application for “adiader”, finding such mark similar with the registered trademark “adidas”.

Per Article 30.1.10 of Taiwan’s Trademark Act, a trademark shall not be registered if such mark is “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, a Mr. Wu, filed trademark application for “adiader” on December 13, 2019 (Application No. 108081998, see below), and designated for use in goods under Class 25, including, among other things, shoes, slippers, boots, sneaker, ski boots, baby shoes, etc.

TIPO found Mr. Wu’s application similar with the registered trademarks “adidas” held by ADIDAS AG (Reg. No. 00054345 and 00054342, see below), and should be rejected based on Article 30.1.10.

More specifically, TIPO reasoned that:

1.      The rejected trademark, “adiader”, shows similar sequence and structure of characters “adi-d-” as presented in the cited trademarks “adidas.” Besides, the first three characters of “adiader” are the same as those of the registered “adidas”. Although “adiader” ends with “er” while “adidas” ends with “s”, such difference is minor and ordinary consumers would still find the two marks similar with each other.

2.      The rejected trademark is applied for goods such as shoes, slippers, boots, sneaker, ski boots, and baby shoes. The cited trademarks, similarly, are applied for use in various kinds of shoes, boots, sport clothing, and training outfit. Thus, the rejected trademark and the cited trademarks are applied for use in similar goods, or, in goods that are often used together by ordinary consumers, or are sold in similar channels.

3.       As to distinctiveness, the cited trademarks “adidas” are highly distinctive because it is not related to the nature or function of its designated goods. In view of such high degree of distinctiveness, it is more likely for consumers to be misled when there exists certain degree of similarity.

4.      Although Mr. Wu argued that the spelling and pronunciation of “adiader” and “adidas” are different, TIPO found such arguments unpersuasive. As mentioned above, the overall appearances of “adiader” and “adidas” are similar, with only minor differences in the last two characters (i.e., “er” v. “as”). More importantly, when deciding whether to purchase, the consumers would not make detailed comparison between the two trademarks. Rather, the decision usually is based on consumer’s general impression. Thus, there still is likelihood that consumers will be confused and misled due to the similarity of these two trademarks and the goods for which these trademarks are applied.

In view of the above, TIPO denied Mr. Wu’s application for “adiader” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R0JlSUJiQmpnWG8wVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan's IP Office Sided With DC Comics' “WONDER WOMAN” In Trademark Opposition Proceeding Against “WONDER KiDS”

On June 16, 2020, Taiwan’s IP Office (TIPO) determined that “WONDER KiDS” is similar with “WONDER WOMAN” of DC Comics (“DC”), and thus shall be cancelled based on Article 30.1.10 of Trademark Act.

The cancelled trademark, “WONDER KiDS” (Reg. No. 01926900, see below), was filed by Vertex Sports Company (“Vertex Sports”) on February 2, 2018, and granted by TIPO on July 16, 2018, designated for goods such as toys, flying discs, sports equipment, baseballs, rackets, sports chest protectors, sports hand guards, dumbbells, stationary exercise bikes, swimming float, fishing equipment, etc.

DC filed opposition against Vertex Sports on October 15, 2018, arguing that “WONDER KiDS” may cause confusion with its famous “WONDER WOMAN” trademarks (Reg. No. 01852625, see below), designated for goods in, among the others, toy cars, fly discs, swimming float, baseball, basketball, and sports equipment.

TIPO sided with DC on June 16, 2020, ruling that “WONDER KiDS” shall be cancelled due to likelihood of confusion caused by its similarity with “WONDER WOMAN.” TIPO’s reasons are as follows:

1.    The cited trademark “WONDER WOMAN” and the main portion of the challenged trademark “WONDER KiDS” are both made up of two ordinary characters, with difference in that the former ends with “Woman”, while the latter ends with “kids”. Additionally, in day-to-day Chinese, “woman” and “kids“ are common words that sometimes are used together, so “woman“ and “kids” are associated with each other. Accordingly, there is medium degree of similarity between Vertex Sports’ “WONDER KiDS” and DC’s “WONDER WOMAN”.

2.    Both “WONDER KiDS” and “WONDER WOMAN” are used in similar goods, such as toy, sport gears, and swimming gears. These goods serve similar function and are usually sold through similar channels, with overlapping customers base. Thus, the two trademarks are used in similar goods.

3.    “WONDER WOMAN” has acquired considerable distinctiveness through the continuous marketing and promotion by DC, including the worldwide popular superhero movies “Batman v. Superman Dawn of Justice” and the blockbuster “Wonder Woman.” Besides, since the meaning of “WONDER WOMAN” has no relation with the nature and function of the designated goods, consumers would consider it distinctive and use it to identify the source of products.

4.    “WONDER WOMAN” as a trademark has been registered in multiple countries, including EU, Canada, Australia, China, Japan, and Brazil, and gained popularity in local market through marketing campaigns and diversified merchandising, such as licensed superhero figures, toys, apparels, etc. In comparison, the records of use submitted by Vertex Sports did not show sufficient media exposure, viewership, and long time of use. As such, TIPO found consumers would be more familiar with “WONDER WOMAN.”

5.    In addition to the similar characters “WONDER KiDS”, VERTEX SPORTS seemingly used a stylized “W” as the backdrop of its challenged trademark. Upon further examination, such stylized “W” demonstrated similar visual effect of a bird’s wings as DC demonstrated in its famous “W” icon for “WONDER WOMAN.” In view of the similarity between “WONDER WOMAN” and “WONDER KiDS”, and the adoption of similar stylized “W” characters, TIPO found VERTEX SPORTS did not file application out of good faith.

Based on the above, TIPO determined that VERTEX SPORTS’s “WONDER KiDS” is similar with DC’s “WONDER WOMAN”, and may cause confusion among the relevant consumers. Thus, the challenged “WONDER KiDS” shall be cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SW9JMHNmVll3SkVEVDh2YmlZR3N5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Huawei’s Trademark Applications For “Kirin” Were Denied By Taiwan’s IP Office

On June 7, 2018, Huawei Technologies Co., Ltd. (“Huawei”) filed two trademark applications for “Kirin” (see below), designated for use in goods under Class 9, including semiconductor, wafer, silicon chip, integrated circuit, printed circuit, etc. On June 12, 2020, Taiwan’s IP Office (“IPO”) found both applications similar with senior trademarks registered by Japan’s Kirin Holdings Kabushiki Kaisha (“Kirin Holdings”), and denied Huawei’s both applications.

(Application No.: 107036008)

(Application No.: 107036007)

The senior trademarks cited by IPO are registered by Kirin Holdings (see below), which are also designated for use in goods under Class 9, including, among the others, silicon chip, and integrated circuit.

(Reg. No.: 01292244 )

(Reg. No.: 01667670)

IPO’s decision is based the following reasons:

1.    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such trademark is 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.

2.    In terms of similarity with the cited trademarks, IPO found the characters (i.e., “Kirin”) shown in Huawei’s applications are highly similar with those shown in Kirin Holding’s registered trademarks, with minor difference in capitalization.

3.    With respect to the similarity of goods, IPO found the designated goods of Huawei’s applications, such as integrated circuit, printed circuit, and silicon chip, are related to or associated with those of Kirin Holding’s registered trademarks in terms of their function, usage, or source of materials.

4.    Additionally, since ”Kirin” constitutes the main portion of both Huawei’s applications and Kirin Holding’s registered trademarks, an ordinary consumer would easily recognize it and use it to identify the source of goods. Added to that, “Kirin” is highly distinctive when used for goods such as semiconductor, because such a word is not related to the nature or function of these designated products. Thus, it will be more likely to cause confusion among the relevant consumers if there is any similarity with Kirin Holding’s highly distinctive “Kirin” trademarks.

5.    Huawei argues that in fact, Kirin Holding’s cited trademarks are not used in goods such as semiconductor or silicon chip, for Kirin Holding’s business scope is limited to manufacturing and selling beverages and drinks only. However, IPO reasons that while Kirin Holding’s cited trademarks may be subject to non-use invalidation for not being put in use for goods in Class 9, such trademarks are still valid and binding upon IPO until they are invalidated.

In view of the above, IPO ruled that Huawei’s applications shall be rejected accordingly.

On another note, Huawei allegedly has been in talk with Kirin Holding for agreement of trademark coexistence. It remains to be seen if Huawei would appeal to buy more time for reaching consensus with Kirin Holdings.

Source:

For application no.: 107036008

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R2tLU0VlS0RFUEZ1VmZrR3hjRHlxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

For application no.:  107036007

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R2tLU0VlS0RFUEh3QWhFSi80VjBHQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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