b-monster’s attempt to register “Boxing b-monster FITNESS STUDIO” is denied due to similarity with “Monster Energy”

On August 19, 2019, b-monster Co. Ltd. (“b-monster”), a gym studio that features “dark boxing” fitness exercise, filed trademark application for “Boxing b-monster FITNESS STUDIO” (Application No. 108054348, see below), intended for use in nutritional supplements under Class 5, such as protein powder, vitamin supplements, enzyme nutritional supplement, etc. 

 

However, b-monster’s application was denied by Taiwan’s IP Office (“TIPO”) on February 9, 2021, because b-monster’s mark is considered similar with Monster Energy’s registered trademarks (Reg. No. 01242825, 01497954, 01713838, and 01497953, see below). 

 

In its determination, TIPO was of the view that:

 

1.     Although there are other decorative drawings presented in b-monster’s mark, TIPO found general consumers, upon seeing such mark, would still focus on “monster”, which is similar with Monster Energy’s aforesaid registered trademarks. Hence, the combination of other elements in b-monster’s mark is insufficient to overcome the impression that “monster” constitutes the main portion of b-monster’s mark. As a result, b-monster’s mark is considered visually and conceptually similar with Monster Energy’s registered trademarks.

 

2.     Monster Energy’s cited trademarks are also applied for use in the same class, covering products like nutritional supplement, meal replacement nutritional supplement, and liquid nutritional supplement. These products serve similar purpose and perform the same function for supplementing nutrition. Thus, TIPO considered b-monster’s mark was applied for use in similar goods. 

 

3.     Further, TIPO noted that in this case, when used as a trademark, “monster” does not relate to the nature, quality, or function of the designated nutritional products. Therefore, TIPO concluded that Monster Energy’s registered trademarks are distinctive, and consumers may use “monster” to identify the source of the provided goods or services. 

 

Since the main distinctive portion of b-monster’s mark is “monster”, and is similar with Monster Energy’s registered trademarks, which are also applied for use in similar goods, TIPO determined that b-monster’s application shall be denied in accordance with Article 30.1.10 of Trademark Law, because the similarity may cause confusion among the relevant public.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K0xESWUxcVl0TzB6dGhkVnFkUE43QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LVM’s “LOCKIT” successful in cancelling “Lockists” in Taiwan’s trademark opposition proceeding

On September 2, 2019, Louis Vuitton Malletier (“LVM”), the trademark registrant of “LOCKIT” (Reg. No. 01578946, see below), filed opposition against “Lockists” (Reg. No. 01992587, also see below), alleging violation of Article 30.1.10 of Trademark Law. 


         

          

The application for “Lockists” was filed on October 19, 2018, designated for use in goods in Class 14, including products such as jewelry, key ring, key chain, metal artwork, bracelets, etc. Taiwan’s IP Office (“TIPO”) granted “Lockists” on June 16, 2019. LVM filed opposition against the registration of “Lockists”, contending such registration will cause confusion with its “LOCKIT” trademark. 

 

On February 9, 2021, TIPO sided with LVM, and ruled that registration of “Lockists” shall be cancelled based on Article 30.1.10 of Trademark Law:

 

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

2.     In terms of similarity, TIPO found both “LOCKIT” and “Lockists” feature the same initial word “lock”, and consist of the same English letters “L”, ”O”, ”C”, ”K”, “I”, and “T”. Thus, consumers with ordinary degree of care would find “LOCKIT” and “Lockists” verbally and visually similar with each other.

3.     As for the similarity of the designated goods, TIPO noted that LVM’s “LOCKIT” was also applied for use in Class 14, including products like jewelry, pearls, rings, earrings, necklaces, pendants, etc., which provide similar decorative function. As a result, TIPO determined that products designated by “Lockists” are similar with those designated by ”LOCKIT”.

4.     With regard to distinctiveness and recognizability, TIPO posited that although “LOCKIT” may be perceived as “lock it”, it does not pertain to the nature or function of its designated products. Hence, TIPO opined that “LOCKIT” shall still be distinctive. In addition, based on the evidence of actual use, TIPO was convinced that in Taiwan consumers are more familiar with LVM’s “LOCKIT” trademark.

 

Given that “LOCKIT” is distinctive and more well-known, and that “Lockists” is similar with “LOCKIT” and applied for use in similar products, TIPO opined that registration of “Lockists” may cause confusion among the relevant public. Thus, “Lockists” was cancelled by TIPO in accordance with Article 30.1.10 of Trademark Law.

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K0xESWUxcVl0TzNiZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office denied trademark application for “Brica” in view of confusion with “BRITA”

On January 28, 2021, Taiwan’s IP Office (“TIPO”) rejected trademark application for “Brica” (application no. 108053240, see below), designated for use in goods under class 11, including household appliance such as coffee machine, hair dryer, water dispenser, beverage machine, etc. 

 

TIPO’s main reasons are that the application violates Article 30.1.11 of Trademark Law, which provides that a mark shall not be registered if such application is similar with other’s well-known trademark, and hence there exists likelihood of confusion on the relevant public, or likelihood of dilution of the distinctiveness or reputation of said well-known trademark. 

 

In this case, TIPO considered “Brica” is confusingly similar with “BRITA”, which is the trademark registered and owned by BRITA GMBH (see below), the worldwide leading company in the water filters and purifiers.

With regard to the well-known status of “BRITA” trademark, based on the publicly available records, such as the worldwide registration records of “BRITA” trademarks, the news coverages, the marketing materials, and the exposure on social media like YouTube, TIPO determined that “BRITA” has become well-known in the field of water filter, filter element, and faucet. Therefore, consumers in Taiwan should be more familiar with the cited trademark “BRITA”.

 

As for similarity, TIPO found “Brica” is visually and verbally similar with “BRITA”, with minor difference in their respective fourth letters, where “Brica” ends with “ca” and “BRITA” ends with “TA”.

 

Turning to the similarity of the designated goods, TIPO noted that the products that “Brica” was applied for use are household appliances that may be used or purchased in association with water filter or purifier, which are the products designated by the well-Known “BRITA” trademarks. For example, in coffee machine, water filter may be used to filter the water, which is later used to brew the coffee. Thus, TIPO determined products designated by “Brica” is similar and associated with the products designated by “BRITA”.

 

Since “Brica” is considered similar with the well-known “BRITA” trademark, and applied for use in similar products, which may cause confusion with the cited well-known trademark, TIPO denied application for “Brica” accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cks1RHlkV0c0UmNaZ1RKRm5UMnZ6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“FOSTER” v.s “NOSTER”: Is there similarity?

On April 15, 2019, CHIESI FARMACEUTICI S.P.A. (“Chiesi”), the Italian pharmaceutical company, filed opposition against NITTO PHARMACEUTICAL INDUSTRIES, LTD. (“Nitto”), alleging that registration of Nitto’s “NOSTER” trademark (Reg. No. 01966235, see below) would cause confusion with Chiesi’s “FOSTER” trademark (Reg. No. 01339137, also see below), which is the brand for its asthma medicine.  

Nitto’s “NOSTER” was filed on April 30, 2018, and granted on January 16, 2019, designated for use in class 1, 3, 5, 16, 29, 30, and 32; and services in class 35, 42, and 44. Chiesi’s opposition focused on goods in class 5, including medicine, medical test paper, medical adhesive tape, sanitary mask, medical capsule, bandages, cotton swabs, dietary foods for medical use, baby food, and nutritional supplement.

 

On January 29, 2021, Taiwan’s IP Office ruled in Nitto’s favor, determining that “NOSTER” is not similar with “FOSTER” and would not cause confusion among the relevant public:

 

1.    Chiesi argued that “NOSTER” shall be cancelled based on Article 30.1.10 of Trademark Law, which provides that a mark shall not be registered if it is similar with a senior mark that is applied for use in similar goods or services, so that there exists likelihood of confusion among the relevant public.

2.    Here, by examining Chiesi’s “FOSTER” and Nitto’s “NOSTER”, TIPO found the two not similar with each other. Unlike “FOSTER”, which is a word with ordinary meaning (i.e., to support or to bring up with care), Nitto’s “NOSTER” has no ordinary meaning. Besides, the pronunciation of the two is also distinguishable due to the difference in their initial letters (“F” v. “N”. ) Thus, TIPO posited that “NOSTER” is dissimilar with “FOSTER”.

3.    As for the similarity in the designated goods, TIPO noted that “FOSTER” is applied for use in pharmaceuticals for human. In this respect, TIPO found some of the goods designated by “NOSTER”, such as “medicine, medical test paper, and medical capsule”, are similar with those designated by “FOSTER”. As for other designated goods like “sanitary mask, cotton swab, and baby food”, TIPO was of the view that they are products for personal hygiene or for infant feeding, which bear little similarity with the goods designated by Chiesi’s “FOSTER”.

4.    Lastly, TIPO found that both trademarks are distinctive, and are actually used in different kinds of products. More specifically, “FOSTER” represents the brand name of Chiesi’s asthma medicine, which is prescriptive medicine adopted by medical centers and hospitals in Taiwan, while Nitto’s “NOSTER” is used for materials of lactic acid bacteria products for metabolism purpose. In view of the difference in product nature, TIPO was further convinced that registration of “NOSTER” will not cause confusion with Chiesi’s “FOSTER”.

Based on the above reasons, TIPO sided with Nitto and denied Chiesi’s trademark opposition.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4STZlQU93QXBqTzVMZVJSb1czUEttQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled “Gichancy” in view of confusion with “GIVENCHY”

On January 27, 2021, Taiwan’s IP Office (“TIPO”) cancelled trademark “Gichancy” (Reg. No. 02001277, see below) after finding the registration of such trademark may cause confusion with the well-known luxury brand “GIVENCHY.”

The opposed trademark, “Gichancy”, was filed on December 24, 2018, by a cosmetic company based in China, designated for use in goods such as necklace, jewelry, watches, pearls, jewelry pendants, etc. The opposed trademark was granted on August 1, 2019. Givenchy SA filed opposition on October 31, 2019, contending that the registration of the opposed trademark may cause confusion with its famous trademark “GIVENCHY”, and that “Gichancy” should be cancelled in accordance with Article 30.1.11 of Trademark Act. 

 

TIPO’s determination is based on the following:

1.    Article 30.1.11 of Trademark provides that a mark shall not be registered if such a mark is similar with other’s well-known trademark so that there exists likelihood of confusion on the relevant public, or dilution of the distinctiveness or reputation of such well-known trademark.

2.    With regard to the well-known status of “GIVENCHY”, after reviewing the submitted evidence, including the registration records of “GIVENCHY” trademark, advertising and marketing materials, media coverage, and sales records, TIPO was convinced that the French luxury brand has gained wide recognizability and become well-known in the field of apparel, footwear, handbag, perfume, and the relevant fashionable products.   

3.    With regard to similarity, TIPO found “Gichancy” and “GIVENCHY” both share the same letters “G”, “I”, “N”, “C”, and “Y”. Consumers with ordinary degree of care would find the overall appearance, structure, and pronunciation of “Gichancy” very similar with those of the famous trademark “GIVENCHY”. 

4.    TIPO further noted that although “GIVENCHY” may refer to a French name, consumers in Taiwan are not familiar with such word. Besides, other than Givenchy SA and its group, “GIVENCHY” is rarely used as a trademark. Thus, TIPO determined “GIVENCHY” trademark is unique and highly distinctive.  

5.    As discussed above, “GIVENCHY” as a trademark has become well-known in fashionable products like jewelry, apparel, handbag, and footwear. Similarly, TIPO found the products designated by “Gichancy”, such as necklace, earrings, pearls, watches, etc., are of similar nature or perform similar function. Therefore, TIPO determined the opposed trademark was applied for use in similar goods.

6.    While the registrant of the opposed trademark argued that consumers in Taiwan will know how to distinguish “GIVENCHY” and “Gichancy” because “Gichancy” has been put in use and registered as trademarks in other countries, TIPO found there is little evidence submitted by the registrant to support its use of the opposed trademark in Taiwan. Thus, TIPO did not find registrant’s arguments persuasive.

 

Based on the above, “Gichancy” was cancelled in view of confusion with the famous “GIVENCHY” trademark. 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4QU5JYVRkZ0JYMG9JdkZvZWMzaWdrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“VIVO” was found not similar with “VIOFO”

Shenzhen Viofo Technology Co., Ltd (“VTC”), a company providing car dash camera and IP camera products, filed trademark application for its “VIOFO” on September 15, 2015, designated for use in class 9, including products such as tablet, GPS, smart phone, camera, remote control equipment, display, battery charger, etc. VTC’s application was granted on August 1, 2016. (Reg. No. 01782436, see below)

 

VIVO Mobile Communication Co. Ltd. (“VBC”) filed opposition on October 13, 2016, contending that the registration of “VIOFO” would cause confusion with VBC’s “VIVO” trademark (Reg. No. 01954386, see below).

Taiwan’s IP Office (“TIPO”), sided with VTC on January 7, 2021, rejecting VBC’s opposition based on the following reasons: 

1.    VBC argued, among the others, that VTC’s “VIOFO” shall be cancelled in view of Article 30.1.10 of Trademark Law, which provides that a mark shall not be registered if such a mark is similar with a senior mark that is applied for use in similar goods, and there exists likelihood of confusion among the relevant consumers.

2.    Here, TIPO found that VBC’s “VIVO” dissimilar with VTC’s “VIOFO”. Although both trademarks share the same letters “V”,”I”, and “O”, “VIVO” consists of four letters, while “VIOFO” consists of five letters. Besides, the pronunciation of “VIVO” is different than that of “VIOFO”, too. Thus, TIPO determined that consumers would not view “VIOFO” similar with “VIVO”. The degree of similarity is quite low.

3.    As to the designated goods, TIPO noted that some of the products designated by “VIOFO” are similar with those by “VIVO”, such as mobile phone and smart phone. However, products such as modem, recorder, plugs, anti-theft alarm, sports goggles, chips, etc., are not communication equipment, and thus shall be distinguishable from the goods in which “VIVO” was applied for use.

4.    TIPO also noted that “VIVO” and “VIOFO” are words that have no ordinary meanings and are not related to the quality or function of the designated goods. As such, both trademarks are distinctive. Although VBC’s “VIVO” possesses higher degree of recognizability and is more well-known among the relevant consumers in Taiwan, TIPO found there are other co-existing trademarks that are applied for use in similar products also featuring “V” and “I” as the initial letters, such as “VIN YOO” (Reg. No. 0168695), “Viano” (Reg. No. 01695051), “VITSMO” (Reg No. 01745989), and “VIZO” (Reg. No. 01787915). Hence, consumers should be quite familiar with this type of trademarks and will be able to distinguish “VIVO” from “VIOFO”.

 

In view of the above, TIPO found “VIOFO” not confusingly similar with “VIVO”, and denied VBC’s opposition accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RXZZMURhZEF0dVBkZS9FcHpMWjlvQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled “JUST TRI IT” in view of confusion with NIKE’s “JUST DO IT”

On June 11, 2020, NIKE INNOVATE C.V. (“NIKE”) filed opposition against “JUST TRI IT” (Reg. No. 02047547, see below), alleging violation of Article 30.1.10 of Trademark Law. Taiwan’s IP Office (“TIPO”) sided with NIKE on January 15, 2021, finding “JUST TRI IT” confusingly similar with NIKE’s famous “JUST DO IT” trademark.

The contested trademark was filed on March 8, 2017, designated for use in goods under class 25, including sportswear, swimming suits, jacket, coats, socks, etc. TIPO granted the registration of the contested trademark on March 16, 2020. However, NIKE contended that the contested trademark would cause confusion with its famous “JUST DO IT” trademark (Reg. No. 01093322, 01665105, and 01732276, see below).

TIPO’s reasons are as follows:

1.     TIPO noted that the contested trademark and NIKE’s aforesaid trademarks are composed of the same words, except that the contested trademark features “TRI” it, while NIKE features “DO” it. TIPO further noted that “JUST TRI IT” pronounced like “just try it”, which conveys similar encouraging and inspiring message as NIKE’s “JUST DO IT”. Thus, TIPO determined the contested trademark conceptually and visually similar with NIKE’s “JUST DO IT” trademarks. 

2.     Turning to the designated goods, TIPO found, like the contested trademark, NIKE’s cited trademarks also are applied for use in similar apparel products, such as shoes, hat, clothing, and sneakers. These products either perform similar function, or are displayed or sold in the same stores. Therefore, TIPO opined the products designated by the contested trademark are associated or related to products designated by NIKE’s aforesaid trademarks.

3.     As to the strength of NIKE’s trademark, TIPO was aware that “JUST DO IT” is distinctive and has become well-known in sportswear products through continuous marketing and worldwide use. Since there was no record submitted to support the use of “JUST TRI IT”, TIPO opined that the relevant consumers shall be more familiar with NIKE’s famous trademarks. 

 

In view of the above, since “JUST TRI IT” is similar with NIKE’s “JUST DO IT”, and is applied for use in similar goods, TIPO opined there exists likelihood of confusion among the relevant consumers. Hence, TIPO found the registration of “JUST TRI IT” violates Article 30.1.10 of Trademark Law, and shall be cancelled accordingly.

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YmhBajF1OUkrbzRaZ1RKRm5UMnZ6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true