MUST’s copyright claim denied by IP Court for failing to prove public performance

 It is quite usual for claimant to conduct private investigation to collect evidence of infringement before formally filing a lawsuit. However, claimant should be careful that the evidence collected should be tailored to the burden of proof in the subsequent litigation. For example, in the setting of copyright infringement, if the claimant intends to assert unauthorized “public” broadcast, the evidence the claimant presents has to show defendant’s use of copyrighted work meets the requirement of “public” broadcast. Evidence showing Infringer’s personal and private use may not count.

 

In a recent copyright lawsuit filed by Music Copyright Society of Chinese Taipei (“MUST”) against a local restaurant for infringing MUST’s right of public performance over musical work, the IP Court denied MUST’s claim because the evidence MUST presented was unable to show there was “public performance” of musical work in the defendant’s restaurant.

 

The evidence prepared by MUST is video clips secretly recorded by unknown source, who intentionally recorded each copyrighted musical work played by every karaoke equipment in defendant’s restaurant in every dining room. The video clips clearly showed the copyrighted music was requested and played by karaoke equipment inside defendant’s restaurant, which was a public area. Nonetheless, the IP Court Judge found the recorded performance of the copyrighted music did not meet the statutory definition of “public performance” under Article 3 of Copyright Act.

 

Per the applicable Copyright Act, “Public performance means to act, dance, sing, play a musical instrument, or use other means to communicate the content of a work to a public that is present at the scene. This includes any communication to the public of an original broadcast of sounds or images through loudspeakers or other equipment.” Based on the statutory language, the IP Court Judge opined that the purpose of public performance should be “to communicate the copyrighted content to ordinary consumers”. That is to say, if the performance is deliberately arranged for “investigatory purpose”, such performance shall not be viewed as “public performance”.

 

Here, the IP Court Judge questioned the source of MUST’s video clips, which obviously were prepared by someone who visited defendant’s restaurant with intent to investigate and collect evidence, rather than to dine as ordinary consumers. As MUST was not able to come up with proper explanation in this respect, the IP Court Judge came to believe that the video clips were prepared by MUST’s staff, and the recorded performance was probably caused by MUST’s staff, not ordinary consumers. Since the performance was not made with intent to communicate the copyrighted content to the general public, it does not meet the requirement of "public performance".

 

Based on the aforesaid findings, the IP Court Judge ruled that the performances recorded in MUST’s video clips were not “public performance” as prescribed by Copyright Act. Since there was no other evidence submitted by MUST to prove defendant’s infringement, MUST’s claims were denied accordingly.

 

Source: 109-Ming-Zhu-Su No. 61 (IP Court, December 14, 2020)

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,109%2c%e6%b0%91%e8%91%97%e8%a8%b4%2c61%2c20201214%2c2

“ZMAX” was found not similar with IMAX Corporation’s “IMAX”

Taiwan ZMAX Optech Co. Ltd. (“TZO”), a company that focuses on optical lens and optoelectronic products, filed trademark application for its “ZMAX” on November 12, 2018, which was later granted on June 16, 2019. TZO’s “ZMAX” was applied for use in service under Class 35, and goods under Class 9, including, among the others, projection equipment, astrophotography lens, optical lens, sighting telescope for firearms, sight for artillery, optical glass, microscope, refracting telescope, stereoscopic device, etc. (Reg. No. 01994932, see below).

On September 12, 2019, IMAX Corporation (“IMAX”) filed trademark opposition against TZO’s “ZMAX”, contending that registration of “ZMAX” under Class 9 would cause confusion with IMAX’s registered “IMAX” trademarks (Reg. No. 00023437, 00341732, and 00346099, see below).

On December 11, 2020, Taiwan’s IP Office (“TIPO”) sided with TZO, determining that TZO’s “ZMAX” is not similar with “IMAX”, and would not cause confusion among the relevant public. 

1.      IMAX argues, and TIPO agrees, that the cited “IMAX” trademark series are all famous and well-known prior to the filing date of “ZMAX”. However, TIPO considers “IMAX” as a trademark is only famous within the field of filming service and movie industry, because there is little record showing “IMAX” has been used in other business. Thus, “IMAX” maybe famous within specific industry or market, but not so famous among the “general” public. After all, the services or products “IMAX” represents are facilities for providing entertainment service to consumers, not products or services that consumers would necessarily use from time to time in their daily life.

2.      Although “IMAX” is distinctive through its long time use in providing the relevant products and services worldwide, TIPO finds there are many other trademarks registered under Class 9 which also consist of “MAX”. For example, there are “AMAX”, “UMAX”, “MAX”, “EMAX”, “G-MAX”, “X-MAX”, “VMAX”, and “Z-MAX”. In particular, there are many co-existing trademarks featuring “MAX”, such as “TuMAX” and “Q’MAX”, designated for use in filming machine and video recorder, which are similar with the goods “IMAX” is applied for use. Therefore, TIPO is of the view that “MAX” is quite common in the relevant business, and consumers should be able to distinguish the source of the goods and services that use “MAX” as part of the trademark.

3.      While TIPO is aware of the fact that “ZMAX” and “IMAX” both share the same word “MAX”, TIPO thinks “MAX” is quite common, so the difference between the initial letters, i.e., “Z” versus “I”, will help consumers distinguish the two trademarks. Further, the opposed “ZMAX” is embedded in a blue oval shape, while “IMAX” is composed of pure four letters. Hence, no matter from the perspective of appearance, pronunciation, or underlying concept, “ZMAX” should not be found similar with “IMAX”.

4.      As to the designated use for goods, TIPO finds some of ZMAX’s designated goods, such as projection equipment, is similar with IMAX’s. However, TIPO notes that ZMAX is also applied for use in other different goods, such as microscope, astrophotography lens, and optical lens. These products are different from IMAX’s designated goods because the former are used for observation or sighting, while the latter are used for filming or movie playing.

5.      TIPO further notes that there is considerable amount of evidence showing “ZMAX” is actively used in providing TZO’s products and service, including posters used in exhibition and the purchase orders. Therefore, TIPO is convinced that both “IMAX” and “ZMAX” are actively used in the relevant products.

6.  In view of the above, since “MAX” is widely used for products in Class 9, consumers should be able distinguish trademarks that feature “MAX”. Simply because “ZMAX” also features “MAX” does not necessarily make it similar with “IMAX”. Besides, “ZMAX” itself is distinctive and is visually and verbally distinguishable from “IMAX”. Even though some of the products designated by “ZMAX” are similar with those by “IMAX”, TIPO opines there is no likelihood that consumers will be confused. Therefore, IMAX’s opposition against TZO’s “ZMAX” is denied.  

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VDV2R1l0SkxTM3NJdkZvZWMzaWdrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Trademark application for “Black Mamba” is considered against public interest and accepted principles of morality by Taiwan’s IP Office

Protako Fishing Tackle Co., Ltd (“Protako”), a company that provides fishing gears, filed trademark application for “黑曼巴Black Mamba” (Application No. 108030063, see below) on May 15, 2019, for use in goods including fishing tackle, fishing gear, fishing reel, fishing bait, fishing rod, etc. 

Taiwan’s IP Office (“TIPO”) denied Protako’s application on November 19, 2020, based on Article 30.1.7 of Trademark Law:

1.    Article 30.1.7 of Trademark Law provides that a trademark shall not be registered if registration of such trademark is contrary to public policy or to accepted principles of morality. The purpose of Article 30.1.7 is to protect social norms and public interest, especially when registration of a trademark may have negative impact on the fair competition or cause a lot of ill feeling among the public.

2.    In this case, TIPO considers Protako’s application violates Article 30.1.7 of Trademark Act. “Black mamba” is the nickname of the late shooting guard of LA Lakers, Kobe Bryant. When speaking of “Black mamba”, the public would immediately connect the name with the late basketball legend. Thus, the name has a strong appeal and huge business potential. If Protako’s application were to be allowed, the public may misunderstand that the fishing gears provided by Protako is related to or associated with the late basketball player. TIPO is also concerned that exclusivity over the name of a global icon may be detrimental to consumer’s interest and fair competition.

3.    Before making final decision, TIPO asked Protako to provide explanation that could support its application and use of such trademark, but Protako provided nothing in response. As such, TIPO denied Protako’s trademark application accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UjVtcVkwblM0SjdOU0JtWjBLalNXZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Pen-Pineapple-Apple-Pen” ruled not similar with Apple’s famous logo

On December 5, 2017, Avex Inc. (“Avex”) filed trademark application for “Pen-Pineapple-apple-Pen”, which is the title of the popular song performed by Japanese comedian Pikotaro, for use in goods under class 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 32, and services under class 35, 41, 43 and 45. Avex’s application was granted on October 16, 2018 (Reg. No. 0194523, see below).

Apple Inc. (“Apple”) filed opposition on January 15, 2019, contending that the registration of Avex’s opposing trademark would cause confusion with Apple’s famous “Apple” and “Apple Pencil” trademarks (see below).

On November 18, 2020, Taiwan’s IP Office (“TIPO”) ruled in Avex’s favor, finding no violation of Trademark Act.

On issue of similarity, TIPO finds “Pen-Pineapple-Apple-Pen” bears little similarity with Apple’s “Apple” or “Apple Pencil”, because the opposed trademark consists of words such as “pen”, “pineapple”, and “apple”, and would be perceived as an expression of sentence. On the other hand, Apple’s logo “Apple” refers to a specific fruit, and would be perceived as one single word. Thus, the overall appearance, pronunciation, and concept of Avex’s trademark is different from those of Apple’s opposing trademark. Apple argues that its “Apple Pencil” should be found similar with “Pen-Pineapple-Apple-Pen”, for “pen” is similar with “pencil”. TIPO is not persuaded. Rather, TIPO evaluates the entirety of Avex’s “Pen-Pineapple-Apple-Pen”, and finds its structure so complex that it is not likely for ordinary consumers to confuse it with Apple’s “Apple Pencil.” Thus, the similarity between Avex’s and Apple’s trademarks is low.

 

As to the designated use of goods or services, TIPO finds that some of them are similar or associated with those designated by Apple’s opposing trademarks in terms of their nature, function, or targeted customers (e.g., computer program, application, earphone, headphone, watch, notebook, etc.), while others are distinguishable (e.g., pet bed, dog house, perfume, tomato sauce, soy sauce, vinegar, and shampoo).

 

While TIPO acknowledges the well-known status of Apple’s “Apple” and “Apple Pencil”, TIPO is also aware of the recognizability of Avex’s “Pen-Pineapple-Apple-Pen” due to the global success and popularity of the brainwashing single. Hence, Avex’s “Pen-Pineapple-Apple-Pen” is distinctive and consumers in Taiwan should be quite familiar with Avex’s trademark. Moreover, with wide coverage of mainstream media like CNN, Time, BBC, and recognition of Guinness World Records as the shortest but most popular single that charts the Billboard Hot 100, TIPO notes that Avex’s “Pen-Pineapple-Apple-Pen” is already well-known among the relevant public, and Avex would have no intent to imitate Apple’s “Apple” or “Apple Pencil”. In short, it would be easy for ordinary consumers to distinguish Avex’s “Pen-Pineapple-Apple-Pen” from Apple’s “Apple” or “Apple Pencil”.

 

In view of the above, although some of the designated goods of Avex’s opposed trademark are similar with those of Apple’s well-known “Apple” and “Apple Pencil”, TIPO finds there should be no likelihood of confusion or dilution given the low similarity between Apple’s and Avex’s trademarks, and the fact that both trademarks are distinctive and quite famous among the relevant consumers. As a result, Apple’s opposition was denied.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4QjF4YW9WaW8yRXpKTVYrSURuM1lOZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Pikotaro's PPAP:

https://www.youtube.com/watch?v=NfuiB52K7X8

  

Taiwan’s IP Court ruled that consumers would not confuse “GIOVANNI VALENTINO” with “VALENTINO”

This case pertains to a long dispute between “GIOVANNI VALENTINO” and “VALENTINO.”

A. Background:

About 10 years ago, the trademark holder for “VALENTINO”, Valentino S.P.A. (“Valentino”), filed numerous challenges against the then owner of “GIOVANNI VALENTINO” trademarks, Florence Fashions (Jersey) Limited (“Florence”), alleging, among the others, that the similarity between Florence’s “GIOVANNI VALENTINO” (Reg. No. 1154031, 1154174, 1141358, 1156129, and 128109) and Valentino’s “VALENTINO” would cause confusion among the consumers (see below). 

	Florence’s Opposed Trademarks	Valentino’s cited trademarks
1	（Reg. No. 1154031）	（Reg. NO. 429221）
2	（Reg. No. 1154174）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, and 929395）
3	（Reg. No. 1141358）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, 929395）
4	（Reg. No.1156129）	（Reg. No.446037, 358389, 410686, 429221, 434569, 430311, 929395）
5	（Reg. No. 128109）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311）

Valentino’s aforesaid oppositions resulted in a series of court’s decisions, which were not in Valentino’s favor, for the then Taipei High Administrative Court (“THAC”) and the Administrative Supreme Court (“ASC”) held that the word “Valentino” was a common Italian name that has been widely used by other trademark registrants. As such, the THAC and ASC ruled that “Valentino” should have relatively “thin” exclusivity, and that there would be no confusion caused.

B. The New Dispute:

On May 3, 2017, another trademark application for “GIOVANNI VALENTINO” was filed by Annabella Valentino, the legal representative of Florence, and was applied for use in goods under Class 25, including various kinds of suits, underwear, pajamas, shorts, skirts, shirts, shoes, socks, sportswear, women’s blouses, jeans, coats, and jackets. The trademark application was then assigned to Yunix International Corp. (“Yunix”), and later granted as trademark Reg. No. 1920306 (see below) on June 16, 2018.

Valentino again filed opposition based on its “Valentino” series trademarks (see above), citing violation of Article 30.1.10 and 30.1.11 of Trademark Act. In its opposition, Valentino cited a new ASC decision backing its argument that although “Valentino” is a common Italian name, it has become a well-known trademark and thus is still likely to be confused with other trademark that also uses “Valentino” in similar goods. However, the IP Office (IPO) and the Appeal Board both rejected Valentino’s claim. Therefore, Valentino filed complaint with the IP Court (IPC), demanding Yunix’s “GIOVANNI VALENTINO” trademark be cancelled.

C. IP Court's decision:

The IPC entered decision on November 30, 2020, affirming the determination made by the IPO.

1.    With regard to Article 30.1.11

1)    Article 30.1.11 provides that a trademark shall not be registered if it is similar with a well-known trademark that may cause confusion among the relevant public, or may damage the distinctiveness or reputation of said well-known trademark.

2)    Here, the IPC affirms that Valentino’s alleged trademarks have become well-known, but only within the fields of goods that the trademark “Valentino” has been put in use. In other words, “Valentino” may be famous among the “relevant” consumers, but not so among the general public.

3)    As to similarity, the IPC notes that there are other elements like “GIOVANNI” and the green backdrop adopted in Yunix’s “GIOVANNI VALENTINO” trademark. With such difference in mind, the degree of similarity between Yunix’s “GIOVANNI VALENTINO” and Valentino’s “VALENTINO” is medium.

4)    As to likelihood of confusion, Valentino argues that there might be confusion in view of the similarity found in Yunix’s trademark and its designated goods. IPC disagrees, and rules in Yunix’s favor because “GIOVANNI VALENTINO” and “VALENTINO” have been co-existing for more than 10 years. The long period of co-existence without evidence of actual confusion makes Valentino’s arguments unpersuasive.

5)    While Valentino also argues that distinctiveness of “VALENTINO” may be diluted due to registration of Yunix’s “GIOVANNI VALENTINO”, the IPC rules that dilution theory is not applicable, because Valentino’s trademark is only famous within the relevant consumers, and has not reached the level of being well-known among the general public.

2.    With regard to Article 30.1.10

1)    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such mark is similar with a senior mark and is applied for use in similar goods or service, so that there exists likelihood of confusion among the relevant consumers.

2)    While “GIOVANNI VALENTINO” is similar with “VALENTINO”, and applied for use in similar goods, the IPC finds co-existence for more than 10 years without evidence of actual confusion tilts to the favor of Yunix. Valentino contends that there are other court decisions which hold the view that “VALENTINO” being a common Italian name could still be highly distinctive and be awarded with greater protection. The IPC acknowledges that these decisions support Valentino’s position, but opines that they are not enough to outweigh the finding that “VALENTINO” and “GIOVANNI VALENTINO” have been co-existing for more than 10 years without evidence showing consumer’s confusion. Besides, Yunix's “GIOVANNI VALENTINO” looks exactly the same as Florence's previously opposed “GIOVANNI VALENTINO” trademark, which the ASC already held consumers would not be confused with Valentino's trademarks. Thus, the IPC sees no reason to change the  previous position taken by ASC, and finds that consumers would know how to distinguish the two trademarks since they have been co-existed for such a long time.

In view of the above, Valentino’s request to cancel the newly filed “GIOVANNI VALENTINO” trademark is denied. 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c56%2c20201130%2c2 

美國聯邦交易委員會(FTC)再度出手，命社群與影音串流業者說明資料收集與商用行為

根據美國聯邦交易委員會（Federal Trade Commission，下稱FTC）2020年12月14日的聲明稿，FTC將行使Federal Trade Commission Act第6條(b)的權利，要求包含Amazon、ByteDance (TikTok)、Discord、Facebook、whatsapp、Reddit、Snap、Twitter、Youtube等業者，在45天之內，以書面回覆這些企業就其提供的社群與影音串流服務，是如何收集與利用消費者的個人資料，以及相關的商用模式。

 

從FTC所釋出的文件內容觀察，上述公司需提交的內容至少包含：

一、            自2019年1月1日起至今公司所提供社群與影音串流服務的一般性資訊

例如：使用者註冊的數量、每天的用戶數量、每月的用戶數量、隱私設定、廣告的曝光程度等。

二、            基於上述一、的服務內容，其相對應所受集、利用、儲存、揭露與刪除的資料

例如：提供服務時所使用、追蹤、評估、或衍生的用戶屬性資料；相關的商業運用計畫、發展策略等。

三、            公司所提供的數位廣告服務

例如：鎖定的用戶族群、收費機制等。

四、        若公司就其上述一、的服務內容有採用演算法等工具解析消費者個人資料，需說明其分析的個人資料種類以及這些分析工具的使用方式

五、        就上述一、的服務內容，詳細說明公司如何評估、研究、與提升使用者互動度(User Engagement)

六、        就上述一、的服務內容，詳細說明其相關的人口統計資訊

例如：公司如何分類或推斷使用者所屬的族群、以及有關使用者個人及其家庭的資料

七、        就上述一、的服務內容，詳細說明服務對象是否包含孩童與青少年？

八、        與市面上其他類似競爭服務的關係

九、        其他相關的資料。

 

來源：

https://www.ftc.gov/news-events/press-releases/2020/12/ftc-issues-orders-nine-social-media-video-streaming-services  

 

關於調查的內容，可參考：

https://www.ftc.gov/system/files/documents/reports/6b-orders-file-special-reports-social-media-service-providers/6bs_order_os_final.pdf

Eagle Creek’s “PACK-IT” unable to cancel Skyline Marketing’s “pack all” in trademark opposition proceeding

On November 3, 2020, Taiwan’s IP Office (“TIPO”) rejected opposition filed by Eagle Creek Inc. (“Eagle Creek”) against Skyline Marketing LLC’s (“Skyline Marketing”) “pack all” trademark. 

The opposed trademark, “pack all”, was filed on July 13, 2018, designated for use in goods under Class 9, such as swimming goggles, glasses, wires, selfie stick, earphones, scale, electronic scale, smart watch, and thermometer. Skyline Marketing’s “pack all” was granted on February 16, 2019 (Reg. No. 01970144, see below).

 

Eagle Creek filed opposition against “pack all” on May 16, 2019, citing violation of Article 30.1.11 and 30.1.12 of Trademark Act. More specifically, Eagle Creek contended that Skyline Marketing’s “pack all” would cause confusion with or dilute the distinctiveness of Eagle Creek’s famous “PACK-IT” trademark (Reg. No. 01707277, see below).

TIPO sided with Skyline Marketing, finding no violation of the cited Trademark Act:

1.    Article 30.1.11 and 30.1.12 of Trademark Act provide that:

“A mark shall not be registered when such mark:

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 (Article 30.1.11);

being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration (Article 30.1.12).”

2.    With regard to Article 30.1.11, TIPO noted that the applicability of Article 30.1.11 premises upon the fact that the opposing trademark, which in this case is Eagle Creek’s “PACK-IT”, must be a well-known trademark. However, upon reviewing all the evidence of trademark use submitted by Eagle Creek, TIPO found the evidence submitted fell short, because most of the documents are in foreign language (I.e., English). Thus, it is unclear if local consumers could recognize and form familiarity with Eagle Creek’s opposing trademark.

3.    In addition, TIPO opines that since “pack” could mean packaging and wrapping, “pack” is not that distinctive when used in goods that serve the functions of packaging or wrapping. In this case, TIPO found Eagle Creek’s “PACK-IT” is designated for use in goods like backpack, book bag, waist bag, wallet and hand bag. Thus, Eagle Creek’s “PACK-IT” is not highly distinctive and would not form strong impression among the relevant consumers in Taiwan.

4.    Since Eagle Creek’s “PACK-IT” is not highly distinctive and less likely to form strong impression amount consumers, and Eagle Creek was unable to provide sufficient evidence showing its “PACK-IT” has built strong recognizability among local consumers here in Taiwan, TIPO found Article 30.1.11 is not applicable in this case.

5.    As to Article 30.1.12, TIPO noted that this statute is applicable when there is evidence showing the opposed trademark was filed with intent to imitate a similar senior trademark that is used in identical or similar goods or service. Again, TIPO found there was no such evidence in this case.

6.    First, as noted above, evidence submitted by Eagle Creek was insufficient to show “PACK-IT” has become a well-known trademark in Taiwan. Thus, there should be little incentive for Skyline Marketing to file “pack all” in order to imitate Eagle Creek’s “PACK-IT”. Additionally, “PACK-IT” was applied for use in various kinds of bags, and their functions, source of manufacture, and sales channel are not related to goods like goggles, glasses, scale, and smart watch, which are designated by Skyline Marketing’s “pack all” trademark. Since “PACK-IT” is not well-known and “pack all” is applied for use in different kinds of goods, TIPO found there was no reasonable ground to support a finding of intent to imitate on the part of Skyline Marketing. Therefore, TIPO ruled that Article 30.1.12 is not applicable.

In view of the above, Eagle Creek’s opposition against “pack all” was denied by TIPO.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4emZqVE9QL3pqN3I0dm83YWNqNlhnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true