Taipei 101 Prevailed Over Magic 101 Store in Trademark Opposition Proceeding Before Taiwan’s IP Office

When speaking of 101 in Taiwan, what is the thing that would immediately pop up in your mind?

If you like shopping and watching the gorgeous New Year fireworks in Taiwan, then Taipei 101 is probably the thing that would come to your mind. “Taipei 101” is famous not only because it’s the name of the well-known financial building, but also because its trademark owner, Taipei Financial Center Corp (“TFC”), has been relentless on going after trademark featuring “101” over the years.

On September 25, 2020, TFC was again successful in cancelling another trademark that popped up on its radar. This time, it’s “Magic 101 Store” (“Magic 101”, Reg. No. 01942756, see below), which is designated for use in services including food retail and wholesale, advertising space leasing, and trade show preparation.

According to TFC, Magic 101 shall be cancelled for violating Article 30.1.11 of Trademark Act, which prohibits registration of a trademark that is similar with other’s well-known trademark so that it may cause confusion among the relevant public. Taiwan’s IP Office (“TIPO”) agreed and found for TFC based on the following reasons:

1. The trademarks cited by TFC, including its registered “101” and “Taipei 101” trademarks (Reg. No. 177868, 165569, and165568, see below), have become famous due to TFC’s continuous and consistent use in providing its shopping, entertaining, and catering service throughout the past decade. Its active use of trademarks, together with its active involvement in popular events such as New Year fireworks and Taipei 101 Run Up, have made “Taipei 101” and “101” become well-known trademarks in the fields of shopping and department store services. To the contrary, TIPO noted that there is little evidence of use submitted by “Magic 101”.

                    

2. Turning to similarity, TIPO found that although there are phrase “THE FRANCHISE GLOBAL” and butterfly design presented in the opposed trademark, the existence of “101” is emphasized in bold fonts with special design on its “0”, which makes “101” the attractive and most distinctive portion of “Magic 101”. Besides, TIPO also noted that the stylized “0” adopted by “Magic 101” is almost identical to the “0” presented in TFC’s “101”. While pure numbers of “101” are not distinctive, TIPO acknowledged that TFC’s long term use of “Taipei 101” and “101” in providing its service has established strong distinctiveness for “101” among the relevant consumers. Since both “Magic 101”, “101”, and “Taipei 101” all feature and emphasize “101” as their main distinctive portions, TIPO found “Magic 101” similar with TFC’s “101” and “Taipei 101”.

3. With regard to the designated services, “Magic 101” was applied for use in services like retail and wholesale, advertising space leasing, etc. TIPO was of the view that these services are highly associated with shopping and department store services designated by TFC’s “Taipei 101” and “101”.

4. Given that TFC’s “Taipei 101” and “101” trademarks have become famous and gained high distinctiveness in the fields of shopping and department store services, that “Magic 101” is similar with “Taipei 101” and “101”, and that the designated services of “Magic 101” are highly associated with those of “Taipei 101”, TIPO determined that “Magic 101” would cause confusion with TFC’s famous “Taipei 101” and “101” and thus violates Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4S1hUMUpiNjc5Sm1Zd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

“Oriental Allure” Was Found Similar With Chanel’s “Allure” and Cancelled By Taiwan’s IP Office

On August 6, 2018, ZHONG TIAN ZHENG HE XING CO., LTD. (“Zhong Tian”) filed trademark application for “Oriental Allure”, designated for use in cosmetics, herbal extracts for beauty, facial masks, facial cleansers, eye creams, cleansers for the body, lip gloss, lotions, body creams, skin care products, make-up removers, cleansing lotions, moisturizer, hair care products, sunscreen lotion, and shampoo. Zhong Tian’s application was granted on February 16, 2019 (Reg. No. 01969648, see below)

Chanel filed opposition against Zhong Tian’s aforesaid trademark on May 16, 2019, contending Zhong Tian’s aforesaid trademark would cause confusion with Chanel’s “Allure” trademarks (Reg. No. 00846557 & 00625777, see below).

On September 28, 2020, Taiwan’s IP Office (“TIPO”) found for Chanel, ruling that Zhong Tian’s “Oriental Allure” violates Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark should not be registered if such a mark is similar with a senior mark which is applied for use in identical or similar goods or service so that there exists a likelihood of confusion among the relevant public.

2.    Here, TIPO noted that “allure” means “temptation or enticement”. Such a word, when being used in goods such as cosmetics and body soap, is highly distinctive because it has no direct or indirect connection with the nature or function of the designated goods. Besides, based on the records, Chanel is the owner of most of the registered “Allure” trademarks in Taiwan. In view of such distinctiveness and uniqueness, consumers are likely to be confused even when there is only minor degree of similarity. Although Zhong Tian argued that there are other registrants that also obtain trademark registrations for “Allure”, the number is low and those trademarks are not applied for use in cosmetic goods. TIPO found Zhong Tian's arguments insufficient to prove “Allure” has been widely used in the relevant businesses and is not distinctive.

3.    As to similarity, TIPO noted that Zhong Tian’s opposed trademark is composed of a drawing and stylized words “Oriental Allure”. The word “Oriental” is adjective, and is used to describe the nature of the word “Allure.” Thus, TIPO determined that “Allure” is the main and distinctive portion of Zhong Tian’s opposed trademark, and that the opposed trademark, when viewed as whole, is similar with Chanel’s registered “Allure” trademark. While Zhong Tian argued its trademark has its own design ideology, such background is irrelevant because similarity is determined based on the viewpoint of ordinary consumers, not on the underlying design ideology.

4.    Zhong Tian’s opposed trademark is applied for use in cosmetics and cleansing products like facial cleansers, eye creams, body lotions, body creams, make-up removers, and Shampoo. TIPO found functions of these goods highly similar with those designated by Chanel’s “Allure” trademark.

5.    Although both Zhong Tian and Chanel submitted considerable amount of evidence of trademark use to prove the corresponding fame of their trademarks, TIPO found records provided by Zhong Tian less persuasive because the documents it submitted, including news reports of its sponsored events, failed to show Zhong Tian’s use of the opposed trademark. Some documents did not show the use of "Oriental Allure", while the others were not properly dated. To the contrary, TIPO found evidence submitted by Chanel, including records of trademark registrations, advertising and marketing materials (including promotions on Vogue, BAZAAR, and GQ Men’s Uno), and other TIPO’s prior determinations, sufficiently demonstrated Chanel’s continuous and consistent use of “Allure”. Thus, TIPO rejected Zhong Tian's arguments that its “Oriental Allure” has already become famous among the relevant public and thus would not be confused with Chanel’s “Allure”.

In light of the similarity with Chanel’s “Allure” trademark, the similarity with the goods in which Chanel’s “Allure“ was applied for use, the high distinctiveness and recognizability of Chanel’s “Allure”, and the fact that the relevant consumers are more familiar with Chanel’s “Allure” at the time when Zhong Tian filed its application for “Oriental Allure”, TIPO ruled in Chanel’s favor, and cancelled the opposed trademark accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R0c2QjNCVDJzbE1HajdkNTFKTUdzdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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