LEGO successful in cancelling “樂高兄弟LEKAO BROS” in trademark opposition proceeding

A Mr. Kao filed trademark application for “樂高兄弟LEKAO BROS” (“LEKAO BROS”) on May 8, 2019, designated for use in goods under class 25, including shirt, pants, sportswear, raincoat, socks, etc. Mr. Kao’s trademark application was granted on November 1, 2019. (Reg. No. 02019884, see below)

Lego Juris A/S (“LEGO”) filed opposition on January 16, 2020, citing violation of Article 30.1.10 of Trademark Act, which provides that a mark shall not be registered if such mark is similar with a senior mark that is applied for use in similar goods or service, which may cause confusion among the relevant public. More specifically, LEGO contended that LEKAO BROS may be confusingly similar with LEGO’s registered trademarks (Reg. No. 00307036 and 01773294, see below)

  

Taiwan’s IP Office (“TIPO”) ruled in favor of LEGO on December 31, 2020:

1.    LEGO alleged, and TIPO agreed, that through worldwide continuous use, LEGO’s asserted trademarks have already become well-known in products like clothing, hat, shoes, and boots. LEGO not only provided its worldwide trademark registrations, but also records of global revenue, advertising campaign, and market reports, which support the high distinctiveness and well-known status of LEGO’s opposing trademarks.

2.    As to similarity, TIPO noted that the opposed trademark consists of “LEKAO BROS” and the corresponding Chinese characters “樂高兄弟”. Since ”BROS” and “兄弟” refer to “brother”, which are ordinary words, TIPO was of the view that ordinary consumers would find “LEKAO” and “樂高” the most attractive portion of the contested trademark. Therefore, TIPO posited that the main distinctive portion of “樂高兄弟LEKAO BROS” are “LEKAO” and “樂高“, and determined that it is visually and verbally similar with LEGO’s aforesaid opposing trademarks.

3.      Turning to the similarity of the designated products, TIPO found LEGO’s opposing trademarks and “樂高兄弟LEKAO BROS” are applied for use in similar goods. For example, LEGO’s trademarks are also used in apparel, shoes, boots, and hats.  Therefore, both trademarks are used in clothing products that could keep warm or provide decorative feature. Accordingly, TIPO concluded that the designated products of “樂高兄弟LEKAO BROS” are relevant to or associated with those of LEGO’s opposing trademarks, and cancelled “樂高兄弟LEKAO BROS” in view of violation of Article 30.1.10 of Trademark Act.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4M3l6RXBucG9yczBNNmtrRmxicVM5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Victoria Beckham unable to cancel VB trademark registered by VB JAPAN TECHNOLOGY CO., LTD.

Victoria Beckham (“Requester”) filed opposition against VB JAPAN TECHNOLOGY CO., LTD. (“VB Japan”) on August 14, 2019, contending that VB as a trademark is first used by Requester and has become famous when VB Japan filed application for the opposed trademark (Reg. No. 01988437, see below). Thus, the Requester asserted that the opposed trademark shall be cancelled because VB Japan filed the application with the intent to imitate Requester’s famous trademark.

VB Japan argued that Requester’s VB trademark is used for cosmetic product and clothes accessories, but the opposed trademark is applied for use in totally different products, such as grease remover, rust remover, decontamination volatile oil, clothing softener, laundry bleach, towel, and wet wipes. Besides, “VB” represents “virus” and “block”, which implies VB Japan’s business and specialty. In sum, consumers will not find VB Japan’s opposed trademark similar with Requester’s VB brand.

Taiwan’s IP Office (“TIPO”) made its determination on December 18, 2020, siding with VB Japan:

1.    Article 30.1.12 of Trademark Act provides that a mark shall not be registered if such mark is 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, and the application is filed with the intent to imitate the earlier used trademark for the applicant is 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.

2.    Based on the evidence submitted by the Requester, TIPO agreed that prior to the filing of VB Japan’s contested trademark on September 27, 2018, Requester’s VB brand has been put in use in cosmetic and apparel products, including lipstick, clothing, and pants.

3.    Turning to similarity between Requester’s and VB Japan’s trademarks, TIPO found them similar, for both trademarks present the combination of two letters “V” and “B”. Consumers may find them verbally and visually similar with each other.

4.    Requester argued that aside from cosmetic products, the VB trademark has been used in clothing and relevant accessories as well, including handkerchief, which should be similar with the products designated by VB Japan’s trademark, but TIPO disagreed. TIPO found that Requester’s VB trademark is used for apparel that can keep warm and demonstrate fashion, while VB Japan’s trademark is used for cleaning and disinfection products. Thus, they serve different purposes and should not be viewed as similar or related products.  

5.    Lastly, TIPO found there is no evidence showing VB Japan has any intent to imitate Requester’s VB brand. As explained by VB Japan, “VB” represents “Virus” and “Block”, and has been used as its company name since 2013. Although Requester argued that “VB” is unique because it is the combination of initials of Requester’s name, TIPO found there are other registered trademarks in Taiwan that also feature “VB”. Thus, simply because VB Japan also uses “VB” as trademark is insufficient to prove it has the intent to imitate Requester’s brand name or reputation.

 

Based on the forgoing reasons, although VB Japan’s registered trademark is similar with Requester’s brand name, they are used in different products, and there is no evidence indicating VB Japan’s intent to imitate Requester’s brand when filing the application for the contested trademark. Hence, Requester’s opposition was denied by TIPO.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4NWs4SFg5aEF6ZzFYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

POLO/LAUREN COMPANY L.P. Successful in cancelling “POLO SMART” before Taiwan’s IP Office

On July 23, 2019, a Mr. Chen filed trademark application for “POLO SMART”, designated for use in goods under class 25, including clothing gloves; aprons; clothes; pants; underwear; sleep masks; neckties; swimwear; shirts; suits; coats; sportswear; raincoats; boots; shoes; scarves; headscarves; caps; socks; and belts. Registration of “POLO SMART” was granted on March 16,2020 (Reg. No. 02047561, see below). 

POLO/LAUREN COMPANY L.P. (“POLO/LAUREN”) filed opposition against “POLO SMART” on June 5, 2020, contending that registration of “POLO SMART” would cause confusion with POLO/LAUREN’s registered “POLO” trademarks (Reg. No. 139936 and No. 321855, see below).

On December 25, 2020, Taiwan’s IP Office sided with POLO/LAUREN, ruling that “POLO SMART” should be cancelled in view of violation of Article 30.1.10 of Trademark Act.

 

1.    Article 30.1.10 of Trademark Act provides that a mark 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.    With regard to similarity, TIPO finds that “POLO SMART” and POLO/LAUREN’s aforesaid No. 321855 trademark both share the same and distinctive word “POLO”, and the drawing presented in the upper part of “POLO SMART” also expresses the idea of polo, which is the same kind of sport that is also featured in POLO/LAUREN’s cited trademarks. Thus, TIPO determines that “POLO SMART” are visually and conceptually similar with POLO/LAUREN‘s cited trademarks.

3.    As to the designated goods, TIPO noted that “POLO SMART” is applied for use in apparel and its accessories like clothing gloves, pants, underwear, sleep masks, shirts, shoes, caps, and belts. However, they are associated with or related to the designated goods of POLO/LAUREN’s cited trademarks. For example, TIPO finds that similarly, POLO/LAUREN’s aforesaid No. 321855 trademark is applied for use in men's and women's clothes, T-shirts, long-sleeved cotton sweaters, sweaters, jackets, pants and windproof jackets. Since these products perform similar function and meet similar need, TIPO determines “POLO SMART” is applied for use in similar goods.

4.    When it comes to the strength of trademark, TIPO notes that POLO/LAUREN has submitted sufficient evidence proving the continuous use, popularity, and recognizability of its opposing trademarks. In addition to apparel products, advertising materials, webpage, and stores that display the cited trademarks, there are also court decisions affirming the findings that POLO/LAUREN’s cited trademarks have become well-known in Taiwan.

5.    In contrast, there is little evidence submitted to prove the use of “POLO SMART”. Hence, TIPO considers POLO/LAUREN’s cited trademarks more famous and consumers should be more familiar with POLO/LAUREN’s cited trademarks. That is to say, POLO/LAUREN’s cited trademarks shall be given more protection over the opposed “POLO SMART”.

Given the similarity between “POLO SMART” and POLO/LAUREN’s cited trademarks, the similarity of goods that the trademarks are applied for use, and the fact that POLO/LAUREN’s cited trademarks are well-known and consumers are more familiar with POLO/LAUREN’s cited trademarks, TIPO considers the registration of “POLO SMART” is likely to cause confusion with POLO/LAUREN’s cited trademarks, and cancels the opposed trademark accordingly. 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ditaNWkzL3A5QmJSdnZ0dEtxZDg1Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

ALCON could not trademark “Join The See What Happens Try On” due to lack of distinctiveness

ALCON Inc. filed trademark application for its slogan “Join The See What Happens Try On” on March 11, 2020, designated for use in contact lens, advertising and enterprise management service (Application No. 109014657). However, on December 1, 2020, Taiwan’s IP Office (“TIPO”) denied ALCON’s application, ruling that ALCON’s application is not distinctive.

According to Article 29.1.3 of Trademark Act, a trademark shall not be registered if such mark consists exclusively of other signs which are devoid of any distinctiveness. Under such circumstance, the applicant may try to prove acquired distinctiveness by showing the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant.

 

Here, TIPO opines that slogan usually is designed to attract consumer’s attention and to describe the feature or value of the provided product or service. Therefore, in general, slogan itself is not distinctive and ordinary consumers would not perceive slogan as symbol representing the source of product or service. Applicant will have to submit evidence to prove the slogan has gained secondary meaning.

 

TIPO then examines ALCON’s use of “Join The See What Happens Try On” on its website. TIPO finds that in the context of ALCON’s webpage (see below), when seeing the slogan “Join The See What Happens Try On”, consumer would perceive the slogan as invitation to join the user community and share the user’s experience about the use of contact lens. Thus, TIPO considers ALCON’s evidence is insufficient to prove the mark has acquired secondary meaning.

                              (https://precision.myalcon.com/)

Additionally, in ALCON’s webpage, TIPO finds the slogan is placed in the upper portion and displayed in smaller font. When seeing the content of the webpage, consumers will be more likely to perceive “PRECISION1®” as trademark, instead of the slogan. Aside from webpage, there is no other supporting material, such as budget and volume of advertising, market share, and revenue, to illustrate how ALCON’s “Join The See What Happens Try On” has been used or recognized as a trademark. Thus, TIPO determines that ALCON fails to meet the requirement for proving secondary meaning, and denies its application accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUFQSG1YeWRzS0lNNmtrRmxicVM5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

POKONOBE ASSOCIATES successful in cancelling “ART JENGA” by asserting its well-known “JENGA” trademark

    

    On December 3, 2020, Taiwan’s IP Office cancelled the trademark “ART JENGA” (Reg. No. 01943266) due to likelihood of confusion with Pokonobe Associates’ ("Pokonobe") registered “JENGA” trademark.

The application for the opposed trademark, “ART JENGA” (see below), was filed on December 28, 2017, designated for use in services under Class 41, such as educational and training service, entertainment contest, live performance, coaching, arrangement of recreational and educational activities, etc. The opposed trademark was granted on October 1, 2018, and Pokonobe filed opposition on December 27, 2018, citing violation of Article 30.1.11 of Trademark Act.

TIPO sided with Pokonobe, finding that the registration of “ART JENGA” would cause confusion with Pokonobe’s “JENGA”:

 

1.       The well-known status of “JENGA”

       TIPO agrees with Pokonobe that “JENGA” has become well-known in Taiwan. Pokonobe        registered “JENGA” in Taiwan in as early as 1994 (Reg. No. 00626795, see below), and           has been promoting the popularity of its “JENGA” building blocks since then, including its        continuous use in its toy products and extensive worldwide exposure on social media                platforms such as YouTube and Facebook.

2.       The similarity between “JENGA” and “ART JENGA”

The only difference between “JENGA” and “ART JENGA” is “ART”, which is an ordinary and common word with little distinctiveness. Therefore, consumers in general will view “JENGA” as the main portion of “ART JENGA”, and might consider it similar with Pokonobe’s “JENGA”.

3.       The strength of the opposing trademark

“JENGA” is quite unique and not a commonly seen word. TIPO also notes that “JENGA” has not been widely registered as a trademark in Taiwan. Aside from Pokonobe’s opposing trademark, TIPO only finds “Jenga Food”, a trademark registered for restaurant service, that also features “JENGA” in Taiwan. Thus, “JENGO” is highly distinctive and consumers are more inclined to view it as the source of goods or service.

4.       Other factors:

TIPO is aware of the fact that Pokonobe has been using the registered trademark in diversified type of products, such as clothing and hats. In addition, block stacking itself is no longer restricted to individual use only. Instead, it has become a popular game or contest that usually involves participation of multiple parties, which is highly recreational and educational. To this end, the services that “ART JENGA” is applied for use, e.g., educational and entertainment contest, are associated with Pokonobe’s ”JENGA” trademark.

Based on the well-known status and high distinctiveness of Pokonobe’s “JENGA“ trademark, the similarity between “JENGA” and “ART JENGA”, and the association found between the designated services of “ART JENGA” and Pokonobe’s “JENGA” trademark, TIPO considers there might be confusion caused by the registration of “ART JENGA”, and thus cancelled the opposed trademark accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4b2VsY2Eyd0VIQ0xweE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

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