HACHETTE FILIPACCHI PRESSE’s “ELLE” prevailed in opposition against “ELECAFE” before Taiwan’s IP Office

On September 18, 2020, Taiwan’s IP Office (“TIPO”) found “ELECAFE” confusingly similar with HACHETTE FILIPACCHI PRESSE’s “ELLE”, and cancelled the opposed trademark accordingly.

The opposed trademark “ELECAFE”, was filed on January 15, 2018, designated for use in goods including tea bag, ice cream, cookies, candy, coffee, tea, and coffee bean. The opposed trademark was granted on April 1, 2019 (Reg. No. 01978815, see below). HACHETTE FILIPACCHI PRESSE (“HFP”) thereafter filed opposition on June 27, 2019.

According to HFP, the opposed trademark should be cancelled because it is similar with its famous “ELLE” trademark (Reg. No. 01813703, see below) and thus may cause confusion among the relevant consumers. (Article 30.1.10 of Trademark law)

TIPO found for HFP based on the following reasons:

1.     TIPO noted that the opposed trademark is composed of “ELECAFE” and a drawing of cup of coffee with smoke. However, the word “CAFÉ” is a common word that refers to restaurant or coffee shop, and the image of cup of coffee also creates the impression of small café. Thus, TIPO was of the view that upon seeing the opposed trademark, consumer’s focus would be its initial “ELE”, rather than “CAFE” and the drawing of the cup of coffee. Since “ELE” is the main portion of the opposed trademark, and the appearance and pronunciation of “ELE” are similar with HFP’s registered “ELLE“, ordinary consumers may view the opposed trademark similar with HFP’s “ELLE”. Hence, TIPO found there is medium degree of similarity between the opposed trademark and HFP’s “ELLE” trademark.

2.     HFP’s asserted trademark “ELLE” was applied for use in services such as steakhouse, restaurant, bar, coffee shop, and hotel, while the opposed trademark was applied for goods such as coffee, tea, tea bag, bread, cake, ice cream, etc. TIPO noted that goods designated by “ELECAFE” are food or drink that are commonly served when providing the service designated by HFP’s “ELLE” trademark. Therefore, TIPO determined that from the viewpoint of consumers, the goods designated by “ELECAFE” is associated with the service designated by HFP’s trademark.

3.     HFP’s “ELLE” is not a common word that is widely used or recognized by ordinary consumers, and the meaning of “ELLE” has nothing to do with the nature and function of the service designated by HFP. As such, “ELLE” is highly distinctive.

4.     When it comes to evidence of use, there is little evidence submitted by the registrant of the opposed trademark. To the contrary, TIPO found HFP submitted mass amount of records supporting its use and marketing of its “ELLE” trademark, including the publication of the worldwide famous “ELLE” magazine (since 1945); the issuance of the Chinese version of “ELLE” magazine in Taiwan (since 1991); the publications of “ELLE Wedding”, “ELLE Decoration”, and “ELLE Accessories” magazine series; the licensed use of ELLE on suitcase, child clothing, handbag, and backpack; and the use of “ELLE” on catering service in countries like Malaysia, Japan, and China. Thus, TIPO was convinced that HFP’s “ELLE” trademark is more well-known. The consumers are more familiar with HFP’s “ELLE.”

Based on the above reasons, TIPO found the opposed trademark “ELECAFE” similar with HFP’s “ELLE”, and may cause confusion among the relevant consumers. As a result, the opposed trademark was cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4allsRFI1Z0U5VFhnM1k3cXRXSG5qQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true   

“VITTON葳登” Is Cancelled Due to Likelihood Of Confusion With LV’s “Louis Vuitton”

On March 16, 2020, LOUIS VUITTON MALLETIER (“LV”) filed opposition against No. 02029260 trademark (as shown below) before Taiwan’s IP Office (“TIPO”), requesting the opposed trademark be cancelled due to likelihood of confusion caused by similarity with LV’s famous “Louis Vuitton” trademark.

The registrant of the opposed trademark argued that the opposed trademark would not be confused with LV's trademark because the opposed trademark is used in different products, such as furniture covers, cushion covers, chair cushion, quilts, sheets, etc. Besides, the  opposed trademark contains stylized letters and thus should not be similar with "Louis Vuitton".

TIPO found in favor of LV on September 18, 2020, ruling that the opposed trademark should be cancelled:

1.    TIPO’s determination is mainly based on Article 30.1.11 of Trademark Law, which provides that “A mark should be cancelled if such mark is identical with or similar to another person’s well-known trademark, 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.”

2.    TIPO first found that LV’s registered “Louis Vuitton” has become well-known in Taiwan. TIPO’s finding is based on records of LV’s trademark registrations, supporting determinations by other Taiwan’s courts, and media coverages such as ELLE, Marie Claire, GQ, and Brand magazines. As such, TIPO is convinced that prior to the filing of the opposed trademark on May 29, 2019, LV’s “Louis Vuitton” has become well-known in Taiwan, particularly in the fields of handbags, jewelry, accessories, watches, etc.

3.    Additionally, “Louis Vuitton” is the name of LV’s founder, and has become highly distinctive due to LV’s ongoing and profound use and marketing around the globe.

4.   With regard to similarity, although the opposed trademark is not exactly the same as LV’s “Louis Vuitton”, TIPO found the word “VITTON” presented in the opposed trademark is similar with the word “Vuitton” in LV’s famous trademark (see below). While there are Chinese characters “葳登” also presented in the opposed trademark, TIPO found the pronunciation of “葳登” in Chinese, which sound like “Wei Dun”, is similar with the pronunciation of “VITTON”. Thus, when being viewed in its entirety, TIPO posited that consumers may find the opposed trademark similar with “Louis Vuitton”. 

5.  Further, TIPO noted that LV has also registered trademarks (e.g., Reg. No. 00405224 and 00961226) that are designated for use in a variety of goods, including products that the opposed trademark is also applied for use, such as chair cushions. Thus, it is likely that LV may use "Louis Vuitton" on similar or associated products. 

In sum, considering “Louis Vuitton” is well-known, the opposed trademark is similar with “Louis Vuitton”, LV’s trademark is used on a variety kinds of goods, and the goods that the opposed trademark is applied for use are similar or associated with goods designated by “Louis Vuitton”, 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=XpJ13RyT4allsRFI1Z0U5VFg2MktZTGVWNnVnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

NIKE’s “JUST DO IT” beat “JUST TRI IT” in Taiwan’s IP Office

TAIWAN TRIATHLON CO., LTD. (“TTC”), a Taiwan-based company providing service for arranging and organizing sports and training events, filed trademark application for “JUST TRI IT” on March 20, 2019, designated for use in services including organizing triathlon and sports event; providing fitness training and coaching; and providing information of recreational activity and training exercise. TTC’s application was granted on April 16, 2020 (Reg. No. 02054520, see below). NIKE INNOVATE C.V. (“NIKE”) filed opposition on June 11, 2020.

According to NIKE, TTC’s opposed trademark is similar with NIKE’s “JUST DO IT” trademark (Reg. No. 01732276, see below), and may cause confusion on the relevant consumers.

Taiwan’s IP Office (“TIPO”) sided with NIKE on July 29, 2020, ruling that TTC’s opposed trademark should be cancelled based on the following reasons:

 

1.    Article 30.1.10 of Trademark Act provides that 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.

2.    On similarity, TIPO found TTC’s “JUST TRI IT” similar with NIKE’s “JUST DO IT”. Although TTC’s opposed trademark is composed of the phrase “JUST TRI IT” and three icons of athlete, the main portion of TTC’s trademark is still “JUST TRI IT”. From the viewpoint of ordinary consumers, the only difference between the two trademarks is their second word. Thus, the overall appearance and pronunciation of the two trademarks are similar.

3.    Additionally, TIPO noted that NIKE’s cited trademark is also applied for use in entertainment services, arranging, organizing and holding a series of sports activities and competitions; and providing sports courses and holding sports lectures for training sports professionals. These services are highly similar with those designated by TTC’s “JUST TRI IT”, because they are all related to arrangement of sports contests, and providing recreational and educational service.

4.    Besides, NIKE’s “JUST DO IT” is highly distinctive. In Taiwan, TIPO found NIKE is the only registrant that acquires registration for “JUST DO IT”. Such mark, after NIKE’s continuous and profound use, has become a well-known trademark, and is more recognizable among the relevant consumers. As such, it is obvious that the relevant consumers are more familiar with NIKE’s “JUST DO IT”.

 

Given TTC’s “JUST TRI IT” is similar with NIKE’s “JUST DO IT”, applied for use in similar service, and NIKE’s “JUST DO IT” is distinctive and possesses higher fame in service regarding organizing and arranging sports event, TIPO ruled TTC’s “JUST TRI IT” may cause confusion among the relevant public and thus should be cancelled based on Article 30.1.10 of Trademark Act.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4T2xVYlovendEdlJhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled logo that is similar with Jaguar’s Trademark

When seeing the below trademark (Reg. No. 02022659), could you recognize the letters presented? (Hint: they are English alphabets.)

If you think they are “X” and “F”, then you are right!

But that’s also why on February 12, 2020, JAGUAR LAND ROVER LIMITED (“JAGUAR”), the multinational British automotive company, filed opposition against this logo before Taiwan’s IP Office (“TIPO”), alleging likelihood of confusion with JAGUAR’s registered “XF” trademark (Reg. No. 01258404, see below)

TIPO sided with JAGUAR on August 11, 2020, ruling that the opposed trademark violates Article 30.1.10 of Trademark Act, which provides that “A trademark shall not be registered if it 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”.

On similarity, TIPO noted that the opposed trademark is composed of English alphabet “F” and three stylized dots. The three dots are arranged and positioned in the upper-left, the middle, and the bottom-left in relation to the alphabet “F”, and they are connected with “F” in a way that would also generate the visual impression of “XF”. Thus, TIPO posited that there is medium degree of similarity between the two trademarks.

As to the designated goods, the opposed trademark is designated for use in automobile and its parts, such as rearview mirror, sideview mirror, windshield, steering wheel, and rim, while JAGUAR’s “XF” trademark is applied for use in automobile, sports car, and RV. Therefore, TIPO posited that the two trademarks are designated for use in similar goods.

Meanwhile, TIPO noted that JAGUAR’s “XF” trademark has been put in use since 2008, and the car that features the “XF” trademark was introduced to Taiwan in 2014. Moreover, “XF” is highly distinctive because it is not related to the nature and function of the goods it is applied for use. On the other hand, TIPO noted that there is little evidence submitted to prove the use and consumer’s recognition of the opposed trademark. Hence, TIPO opined that the relevant consumers are more familiar with JAGUAR’s “XF”, which shall be awarded with greater weight when considering likelihood of confusion.    

In conclusion, since the opposed trademark is similar with JAGUAR’s “XF” trademark, is applied for use in similar goods, and JAGUAR’s “XF” is distinctive and is more recognizable, TIPO ruled that the opposed trademark should be cancelled due to likelihood of confusion caused by its similarity with JAGUAR’s “XF”.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K3Z3NmRXQmhHdGh1VmZrR3hjRHlxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Godzilla Gear”, A Trademark Applied For Use In Export And Import Service, Was Cancelled Due To Likelihood of Causing Confusion With Toho’s Famous “GODZILLA” Trademark

 Toho Co. Ltd. (“Toho”), the Japanese company that creates the iconic monster movie series “Godzilla”, filed trademark opposition in Taiwan’s IP Office. (“TIPO”) against “Godzilla Gear” on April 14, 2020, citing violation of Article 30.1.11 of Trademark Law.

The opposed trademark, “Godzilla Gear”, was filed on June 3, 2019, originally applied for use in retail and wholesale, department store, online shopping, and convenience store services, and products such as suitcase, backpack, purse, sportswear, swimsuit, apparel, toy bag, pajamas, cap, necktie, etc. To overcome the similarity posed by Toho’s registered “GODZILLA” trademarks, the applicant reduced the scope of designated services, and TIPO in the end granted the application on January 16, 2020. The opposed trademark, after modification of its designated use, only covered services including import and export, auction, online action, and providing market information (Reg. No. 02036332, see below). 

However, Toho still filed opposition against “Godzilla gear”, contending that registration of such trademark would cause confusion with its famous “GODZILLA” (Reg. No. 00667250, see below).

Trademark holder of “Godzilla Gear” argued that the services in which the opposed trademark is applied for use are very different from Toho’s “GODZILLA” trademark, which is applied for use in products and service such as caps, scarf, backpack, computer, toy, jewelry, and entertainment. Thus, “Godzilla Gear” will not cause confusion with Toho’s registered “GODZILLA” trademark.

TIPO, based on the following reasons, sided with Toho:

1.    TIPO found that Toho’s registered “GODZILLA” has become a famous trademark at the time when the opposed trademark was filed. Toho submitted sufficient evidence in this regard, such as records showing that the monster movie series “GODZILLA” was first introduced in as early as 1954, and that the iconic monster “GODZILLA” has been the leading character in multiple popular movies, including “Godzilla against Mecha Godzilla” (2002), “Godzilla: Tokyo SOS” (2003), “Godzilla: Final Wars” (2004), “Godzilla” (2014), and “Godzilla II: King of the Monsters” (2019). In particular, the reboot “Godzilla” movie in 2014 was ranked among Taiwan’s top 10 movies of 2014, and its sequel “Godzilla II: King of the Monsters” was also a box office hit, accumulating NT$ 200 million within just four weeks after its introduction to Taiwan’s cinema. Thus, TIPO was convinced that “GODZILLA” has been widely recognized and achieved the status of well-known trademark before the opposed trademark was filed in 2019.

2.    As to similarity, TIPO noted that both “Godzilla Gear” and Toho’s “GODZILLA” feature the word “Godzilla”, and such word would constitute the main portion of trademark upon being seen by ordinary consumers. Thus, the visual appearance, pronunciation, and concept of the two trademarks are highly similar to each other.

3.    The word “Godzilla” is created by Toho and has no ordinary meaning. Therefore, it is highly distinctive, and consumers will have strong tendency to view it as trademark.

4.    Aside from appearing in the monster movies, Toho’s “GODZILLA” has been widely used on various types of merchandise, such as apparels, movie posters, stationery, and toys. Although the opposed trademark is applied for use in export/import and online auction service, which are not the same as those designated by Toho’s “GODZILLA” trademark, TIPO posited that given the well-developed and diverse marketing channels, it is likely that products bearing Toho’s “GODZILLA” are also supplied through the import/export or online service. Therefore, TIPO considers that the designated services of the opposed trademark are associated with the products designated by Toho’s “GODZILLA”.

Based on the aforesaid reasons, TIPO sided with “GODZILLA” and cancelled “Godzilla Gear” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SnRWUzNNYmJ0bkpBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true          

NBA successful in cancelling “Battle Bee” trademark in view of similarity with its registered trademark for “Charlotte Hornets”

On August 17, 2020, Taiwan’s Intellectual Property Office ("TIPO") sided with NBA Properties, Inc. (“NBA”), and ruled that the “Battle Bee” trademark (Reg. No. 01941799, see below) should be cancelled due to similarity with NBA’s registered trademark for the team “Charlotte Hornets” (Reg. No. 01682798, see below).

(Reg. No. 01941799)

(Reg. No. 01682798)

On March 19, 2018, the opposed trademark, “Battle Bee”, was filed and applied for use in goods under Class 12, including automobile, wheel, seats for automobile, automobile parts, pipe, brake, water tank, etc. The opposed trademark was granted on October 1, 2018. NBA filed opposition against the “Battle Bee” trademark on December 28, 2018, alleging violation of Trademark act.

Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such mark is identical with or similar to another person’s well-known trademark, 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, unless the proprietor of the said well-known trademark consents to the application.

TIPO found for NBA based on the following reasons:

1.    First of all, there were large amount of records submitted by NBA showing that at the time the opposed trademark was filed, NBA’s registered trademark “Charlotte Hornets” has already been famous and well-known in the relevant public. For example, “Charlotte Hornets” was registered in 2014, and such trademark has been recognized by sport fans in Taiwan through the wide TV broadcast of games, and news coverage. In particular, the owner of team “Charlotte Hornets” is the legendary NBA players Michael Jordan, and Jeremy Lin, the one who created “Linsanity”, also played for the team “Charlotte Hornets”. Thus, “Charlotte Hornets” enjoys high popularity among relevant public in Taiwan.

2.    As to similarity, both “Battle Bee” and NBA’s “Charlotte Hornets” feature the drawing of a bee, with similar style in portraying the bee’s head, feelers, and wings. Besides, the overall arrangement of the elements presented in the two trademarks are similar as well: both feature a bee as backdrop, with English words displayed horizontally at the center. Thus, “Battle Bee” is similar with “Charlotte Hornet”.

3.    Turning to distinctiveness, TIPO notes that “Charlotte” may refer to the city in the state of North Carolina or a name, and “Hornets” may mean wasp. Thus, “Charlotte Hornets” as a trademark is highly distinctive when used in goods such as recordings of basketball games, sports bag, basketball magazine, jersey, and in services such as production and publication of basketball games recording, basketball training camp, and provision of game information.

4.    TIPO further notes that NBA’s registered trademark “Charlotte Hornets” is not only the team’s icon, but has also been used in wide range of goods, such as apparel, hats, new born baby’s clothes, smartphone holder, bouncy ball, and wristband. Therefore, although “Battle Bee” as a trademark is designated for use in different goods, given “Charlotte Hornets” has been so famous and used in diversified kinds of products, it is still likely that ordinary consumers may misunderstand and be confused that there is license, partnership, or other forms of business relationship between the holders of “Battle Bee” and “Charlotte Hornets.”

 

Based on the aforesaid reasons, TIPO rules that “Battle Bee” should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cHJqNFJ2TGJDeEdZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Monster Energy Lost The Battle of “Claw”

 Nanjing Aisiyou Clothing Co. Ltd. (“NAC”), an apparel brand based in China, filed trademark application for “SUAMOMENT” on April 12, 2017, designated for use in clothing, pants, dresses, knitted clothes, underwear, children's clothing, baby clothes, waterproof clothes, shoes, hats, clothing gloves, scarves, socks , skirts, jackets, shirts, swimsuits, clothing belts, and sneakers. NAC’s opposed trademark was granted on December 1, 2017 (Reg. No. 1883792, see below)

Monster Energy Company (“MEC”) filed opposition against NAC on February 26, 2018, contending that the registration of the opposed trademark would cause confusion with MEC’s registered claw trademarks (see below)

(Reg. No. 1497952, 1713839, 1237373, and 1734749)

The IP Office (TIPO) disagreed, denying MEC’s opposition on December 26, 2018, finding NAC’s opposed trademark did not violate the cited Trademark Act. MEC, after losing its appeal before the Appeal Board, filed complaint with Taiwan’s IP Court (TIPC), requesting TIPO’s ruling should be vacated.

TIPC, based on the following reasons, upheld TIPO and Appeal Board’s decisions:

1.    The opposed trademark and MEC’s cited trademarks are dissimilar. Although both trademarks display the design of a claw, the shape and style of the claws are different. NAC’s claw is displayed at different angle, with blood dripping down below. Besides, NAC’s trademark further includes the word mark “SUAMOMENT”, which provides another distinguishable element for the opposed trademark. Thus, in terms of difference in overall appearance, pronunciation, and conception, TIPC found TIPO was correct in finding the opposed trademark not similar with MEC’s cited trademarks.

2.    MEC contended that the opposed trademark is applied for goods that are similar with those designated by MEC’s cited trademarks. But TIPC did not think so. The court found that while both NAC and MEC applied for use in similar goods such as boots, shoes, and clothes; MEC’s cited trademarks were applied for use in other goods that are different from NAC’s opposed trademark, such as smart phone, tablet computer, cell phone, nutrition supplants, and drinks. Thus, the court did not find the goods designated by NAC’s trademark similar with those designated by MEC’s cited trademarks.

3.    As to the strength of distinctiveness, the court found both MEC’s and NAC’s trademarks unrelated to the nature and function of the designated goods, so the claws featured in MEC’s trademarks and NAC’s opposed trademark are arbitrary and distinctive.

4.    The court noted that in comparison to NAC’s opposed trademark, MEC’s cited trademarks are used in more diversified goods. However, there is no evidence showing actual confusion, and no records suggesting NAC’s and MEC’s products are sold through the same channels.

In view of the above, since NAC’s opposed trademark is not similar with MEC’s cited trademarks; only part of the goods designated by MEC’s trademarks are similar with those designated by NAC’s; and there is no evidence showing actual confusion and NAC’s bad intent, the court in the end ruled that the registration of NAC’s opposed trademark is not likely to cause confusion with MEC’s cited trademarks.   

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,108%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c81%2c20200730%2c2