KAO CORPORATION prevails in trademark opposition against “J.KAO”

 On March 25, 2021, Taiwan’s IP Court (“TIPC”) sided with KAO Corporation, the registrant of series of “KAO” trademarks (Reg. No. 388523, 642986, 623793, 01694718, and 01305339, see below), finding registration of “J.KAO” would cause confusion among the relevant public, and affirmed the decision to cancel “J.KAO” entered by Taiwan’s IP Office (“TIPO”).

 

The contested trademark, “J.KAO”, was filed by Big Fun International Co. Ltd. (“Big Fun”) on December 10, 2018, designated for use in goods under class 3, including, among the others, make-up lotion, cosmetic sunscreen, moisturizer, lotion, facial mask, perfume, face cream, etc. The application for “J.KAO” was granted on July 1, 2019. (Reg. No. 01995183, see below)

 

KAO Corporation filed opposition on September 23, 2019, contending that “J.KAO” is confusingly similar with KAO Corporation’s registered “KAO” trademarks, and thus should be cancelled in view of Article 30.1.10 of Trademark Law. TIPO ruled in favor of KAO Corporation on April 17, 2020, finding the registration of “J.KAO” violating the cited Trademark Law. TIPO’s decision was subsequently affirmed by the Appeal Board on July 30, 2020, so Big Fun took this case to TIPC.

 

TIPC’s decision is based on the following reasons:

1.      For Article 30.1.10 of Trademark Law to be applicable, the contested trademark must be found similar with the senior trademark, so that the registration of the contested trademark might cause confusion among the relevant public. 

2.      Here, TIPC found Big Fun’s “J.KAO” and KAO Corporation’s “KAO” all present the word “KAO”, which make them visually similar with each others. Although Big Fun argued that the idea of “J.KAO” is based on the combination of initials of its founder’s name, i.e., “Jean Kao”, TIPC opined that the idea or origin of a trademark is not what ordinary consumers would perceive when seeing the mark. As such, determination of similarity is based on objective observation of “J.KAO”, without regard to Big Fun’s underlying idea when creating the contested trademark. Accordingly, TIPC found “J.KAO” verbally and visually similar with KAO Corporation’s “KAO”.

3.      Turning to similarity of designated goods, Big Fun argued that its trademark is designated for use in goods under class 3, while the designated goods of the cited trademarks are goods under class 6, 2, and 7, which prove they should not be found similar. TIPC disagreed. Although the designated goods are classified under different categories, TIPC noted that KAO Corporation’s cited trademarks were designated for use in goods that provide cleaning, beauty, and skin care functions, such as soap, washing cream, shampoo, conditioner, cosmetics, etc. These products, like those designated by “J.KAO”, are for personal hygiene and beauty use, and should be found similar and associated with each other. Thus, TIPC found “J.KAO” is applied for use in similar products.

4.      Based on the evidence submitted by KAO Corporation, TIPC was convinced that prior to the filing date of “J.KAO”, KAO Corporation’s “KAO” has been used on various kinds of cleaning and cosmetic products, such as “Biore” (for face wash) and “Curel” (for make-up remover), which prove consumers in Taiwan has been quite familiar with the cited trademarks when application for ”J.KAO” was filed. While Big Fun did submit some records showing its “J.KAO” is used on its product, package, and handbag, TIPC found the volume of evidence limited, and the date of use is after the filing date of Big Fun’s “J.KAO”, which is not helpful to prove consumer’s familiarity at the time when “J.KAO” was filed for registration.

In view of the above, since “J.KAO” is similar with “KAO”, and applied for use in similar goods, TIPC found TIPO was correct in finding registration of “J.KAO” might cause confusion with KAO Corporation’s “KAO” trademarks. Thus, TIPC upheld TIPO’s determination and rejected Big Fun’s lawsuit accordingly.

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c99%2c20210325%2c2

“MANGO” beat “mango tree” in trademark opposition proceeding

On February 24, 2021, Taiwan’s IP Office (“TIPO”) cancelled trademark “mangotree芒果樹”, finding it similar with Consolidated Artists BV’s “MANGO” trademark.

 

The cancelled trademark, “mangotree芒果樹”, was filed on January 2, 2019, designated for use in goods under class 14, including jewelry, watches, metal artwork, accessories for earrings, pendant box, etc. The application was granted on May 1, 2020 (Reg. No. 02056120, see below).

Consolidated Artists BV filed opposition against “mangotree芒果樹” on July 30, 2020, contending that the registration of “mangotree芒果樹” would cause confusion with its famous “MANGO” trademark (Reg. No. 01047182, see below).

Taiwan’s IP Office (“TIPO”) found in favor of Consolidated Artists BV, ruling that the registration of “mangotree芒果樹” violates Article 30.1.11 of Trademark Law:

1.     Per Article 30.1.11 of Trademark Law, a mark shall not be registered if such mark is similar with other’s famous trademark and thus may cause confusion among the relevant public, or may harm the reputation or dilute the distinctiveness of other’s famous trademark.

2.     Here, TIPO was convinced that based on the worldwide registration records, news reports, and sales records, the cited “MANGO” trademark is already a well-known trademark in clothing products and the relevant accessories prior to the filing date of “mangotree芒果樹”.

3.     As to similarity, TIPO found the opposed trademark “mangotree芒果樹” also presents “mango”, which is the same word as presented in the cited “MANGO” trademark. Although the opposed trademark further presents “tree” and “芒果樹”, TIPO determined that these additional elements would not make the opposed trademark distinguishable. It is because “tree” is ordinarily language, which is not distinctive, and “芒果樹” also refers to “mango”. As such, ordinary consumers would find “MANGO” conceptually and visually similar with “mangotree芒果樹”. 

4.     TIPO further noted that there is no evidence submitted to support the use of“mangotree芒果樹”. To the contrary, Consolidated Artists BV submitted lots of evidence to support its use of “MANGO” trademark. For example, sales records show that “MANGO” is not only used in apparel, but also used in other products such as jewelry, watches, and glasses. Therefore, TIPO was convinced that “MANGO” as a trademark is widely used in various products, and that the consumers are more familiar with “MANGO” trademark.

 

In light of the above, since “mangotree芒果樹” is quite similar with the famous trademark “MANGO”, and both “MANGO” and “mangotree芒果樹” are applied for use in similar products such as jewelry and its accessories, which provide similar decorative function, TIPO determined that registration of “mangotree芒果樹” may cause confusion among the relevant consumers. Thus, the opposed trademark “mangotree芒果樹” was cancelled based on Article 30.1.11 of Trademark Law. 

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OWxuQnQ1MW44SnBxZXdUQk45Nm5iZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office denied Monster Energy’s opposition against “megamonster”

On February 17, 2020, Monster Energy Company (MEC), the registrant of series of “Monster Energy” trademarks (see below) in Taiwan, filed opposition against “megamonster”, alleging that “megamonster” is similar with its famous trademarks “Monster Energy”, and there exists likelihood of confusion among the relevant public.

 

The opposed trademark, “megamonster”, was filed on April 19, 2019, and granted on December 1, 2019 (Reg. No. 02026088, see below), designated for use in goods under class 20, including products like table, chairs, metal furnitures, wooden ornaments, hangers, ladders, etc.  

 

Taiwan’s IP Office (TIPO) found against MEC on March 12, 2021, finding no similarity between MEC’s alleged trademarks and the opposed trademark:

1.     TIPO noted that the opposed trademark mainly features a large and stylized letter “M” with “megamonster” underneath. The style, structure, and organization, when viewed as a whole, are substantially different from MEC’s word mark (i.e., “Monster Energy”) and the combination of claw and “Monster Energy” shown in the cited trademarks.

2.     Although MEC argued that its cited trademarks should be well-known trademarks in Taiwan, TIPO found the evidence presented by MEC insufficient. While the submitted news reports did show that MEC’s cited trademarks appeared in numerous worldwide famous gaming and sports contests sponsored by MEC, TIPO was of the view that the main content and focus of these reports were about the sponsored events, not MEC’s trademarks. In other words, such reports are not direct evidence showing MEC’s active use of trademark in Taiwan. Thus, TIPO did not consider them sufficient to support MEC’s arguments that the cited trademarks have become well-known in Taiwan.

3.     MEC further argued that its energy drinks products, which bear the cited trademarks, are very popular in Taiwan. The sale of MEC’s products should support the well-known status of the cited trademarks. However, TIPO found there is no evidence such as sales records or data like market shares to back MEC’s position. Therefore, TIPO did not side with MEC.

4.     In sum, since the evidence submitted by MEC could not support a finding of well-known status of MEC’s cited trademarks, and the degree of similarity between the cited trademarks and the opposed trademark is low, TIPO found registration of “megamonster” not violating Trademark law.

 

In view of the above, MEC’s opposition was denied.

 

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Nkh0ODNveXpxRXplYU51TmxxQXFXUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Microsoft’s “HALO” prevailed in its opposition against “HaloBot”

On February 26, 2021, Taiwan’s IP Office (“TIPO”) sided with Microsoft, ruling that “HaloBot” should be cancelled due to similarity with Microsoft’s “HALO”

Makeblock Co. Ltd. (“Makeblock”), a global STEAM education solution provider based in China, filed trademark application for “HaloBot” on August 30, 2019, designated for use in games consoles, toy building blocks, game console controllers, toy robots, and other products in class 28. Makeblock’s application for “HaloBot” was granted on April 1, 2020 (Reg. No. 02050354, see below), and Microsoft filed opposition on June 30, 2020.  

 

According to Microsoft, Makeblock’s “HaloBot” is confusingly similar with Microsoft’s “HALO” (Reg. No. 01111964, see below), which violates Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

 

TIPO ruled in Microsoft’s favor, based on the following reasons:

1.      Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark is similar with other senior trademark that is applied for use in similar goods or service, and therefore might cause confusion among the relevant consumers.

2.      As to similarity, TIPO found “HALO” and “HaloBot” visually and verbally similar with each other. Although “HaloBot” further includes “Bot”, TIPO considers “Bot” does not create much distinction. It is because “Bot” refers to “robot”, which would not be distinctive when being used in products such as toy robots for kids.  

3.     As to the designated goods, TIPO found Microsoft’s “HALO” is also applied for use in products such as toys, game consoles, stuffed toys, game cards, board games, game appliance, electronic handheld game consoles, etc. These products, TIPO opined, are similar with products designated by Makeblock’s “HaloBot” for they both serve similar recreational and entertaining functions for kids.

4.     Turning to the strength of the trademark, TIPO noted that Microsoft’s “HALO” is distinctive if used in toy and gaming device for kids. Additionally, Microsoft’s “HALO” has been used on its toys and relevant products for years, so "HALO" as a trademark is already known by relevant consumers through the continuous sale and promotion of its products. Therefore, consumers shall be more familiar with “HALO”, which shall be awarded with better protection over the similar trademark “HaloBot.”

In sum, TIPO considers “HaloBot” similar with “HALO”, so the registration of “HaloBot” would cause confusion with Microsoft’s “HALO” among the relevant consumers. As a result, TIPO cancelled the opposed trademark "HaloBot" accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bzkvbVVzTkxPd1k0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office found no confusion between “FIVI” and Jaguar’s “PIVI” trademark

On February 26, 2021, Taiwan’s IP Office (“TIPO”) denied opposition filed by Jaguar Land Rover Limited (“Jaguar”), determining that registration of “FIVI” would not cause confusion with Jaguar’s “PIVI” trademark.

The opposed trademark, “FIVI”, was filed on August 28, 2019, and granted on February 16, 2020 (Reg. No. 02041389, see below), designated fur use in goods under class 12, including products like bicycle pumps, headrests for vehicle seat, child safety seat, anti-theft device for vehicle, sunshade device for vehicle, windshields, rearview mirror, front headlight wiper, etc. 

 

Jaguar filed opposition on May 15, 2020, contending that the registration of “FIVI” would cause confusion with its “PIVI” trademark (Reg. No. 02037452, see below), which violates Article 30.1.10 of Trademark Law. 

TIPO did not side with Jaguar, finding that the registration of “FIVI” does not violate the cited Trademark Law:

1.    Jaguar argued that “FIVI” is similar with “PIVI” because both share the same letters “I”, “V”, and “I”, but TIPO disagreed. To the contrary, since “FIVI” and “PIVI” are composed of foreign letters, TIPO posited that ordinary consumers would pay more attention to the initial letters, and the difference in the initial letters would be sufficient for consumers to distinguish “FIVI” from “PIVI”. Additionally, the pronunciation of “FIVI” is also different from that of “PIVI”. The degree of similarity between “FIVI” and “PIVI” is medium.

2.    As to the designated goods, TIPO noted that both Jaguar’s “PIVI” and the opposed trademark “FIVI” are applied for use in relevant parts, components, or devices of vehicle. They all serve similar purpose and perform similar function. Therefore, “FIVI” is applied for use in goods that are similar with Jaguar’s “PIVI”.

3.    TIPO acknowledged that Jaguar’s “PIVI” and the opposed trademark “FIVI” are both distinctive because they do not imply or describe the nature, quality, and function of the designated goods. However, TIPO noted that prior to the registration of “PIVI”, there are already other trademarks that also present similar combination of “I”, “V”, and “I”, and are designated for use in similar goods under class 12, For example, there are “GIVI” (Reg. No. 01133052), “KIVI” (Reg. No. 01227785), and “DIVI” (Reg. No. 01864295), which are also applied for use in relevant devices and parts of automobile and motorcycle. Since these trademarks have co-existed for some time, the relevant consumers would know how to distinguish trademarks featuring similar combination of “I”, “V”, and “I”, and are less likely to be confused by registration of “FIVI”.

4.    In view of the above, since the degree of similarity between “FIVI” and “PIVI” is, at best, medium; the opposed trademark “FIVI” is also distinctive; and there have been lots of co-existing trademarks that share similar combination of letters, TIPO found consumers shall be able to distinguish “FIVI” from “PIVI”. Thus, TIPO ruled that registration of “FIVI” would not cause confusion with Jaguar’s “PIVI”, and denied Jaguar’s opposition accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bzkvbVVzTkxPd1lqb0t1ZW5mQUNaZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Court handed “ZARA” a narrow victory in its trademark opposition against “SARACARES”

On February 24, 2021, Taiwan’s IP Court partially vacated IP Office’s determination in opposition proceeding involving “ZARA” v.s “SARACARES”, finding registration of “SARACARES” for use in stationery products (class 16) and advertising and rental services (class 35) would not cause confusion with the famous apparel brand “ZARA”.

 

The contested trademark, “SARACARES”, was filed on February 14, 2017, designated for use in class 16 (for stationery such as notebook, envelope, cards, etc.), class 35 (for various services including advertising, computer database management,  business consultation, department store, supermarket, market research, online shopping, retail and wholesale service for apparel and accessories, accounting, rental service, etc. ) and class 36 (for various financial services including insurance, real estate, banking, security transaction, etc.). 

 

Application for “SARACARES” was granted on October 16, 2017 (Reg. No. 01876420, see below). Industria De Diseno Textil, S.A. (“INDITEX”), registrant of “ZARA” trademarks in Taiwan, filed opposition on January 15, 2018, arguing that the registration of “SARACARES” would cause confusion with its “ZARA” trademarks that were also applied for use in class 16 and class 35. 

On July 14, 2020, Taiwan’s IP Office sided partially with INDITEX, finding “SARACARES” similar with “ZARA”, and would cause confusion with INDITEX’s “ZARA” trademarks because they were applied for use in similar goods (class 16), and services (class 35). Thus, all the designated goods in class 16 and the majority of designated services in class 35 were cancelled by the IP Office. The Appeal Board affirmed the finding of IP Office, so the case was further appealed to the IP Court. 

 

The IP Court narrowed down the exclusivity of INDITEX’s “ZARA” trademark right by vacating part of IP Office’s finding, based on the following reasons:

1.     Although the contested “SARACARES” and the cited “ZARA” trademark series (Reg. No. 01406674, 01345421, 01595432, 01520397, 01535369 see below) share similar initial letters (i.e., SARA v. ZARA), the IP Court found there is still visual difference between the two trademarks, which renders the degree of similarity not as high as was claimed by INDITEX.

2.     The IP Court noted that the cited “ZARA” trademark series are also designated for use in class 16 (stationery products like pen, stickers, stapler, etc.) and class 35 (department store, business consultation, online shopping, vending machine rental, and advertising service), which are similar with the products and services designated by “SARACARES”. However, the IP Court also noted that while “ZARA” as a trademark is well-known in apparel products, there is little evidence of actual use for the products or services designated under class 16 and class 35 in Taiwan. In other words, even though ZARA has registered series of trademarks, such as “ZARA HOME” and “ZARA FOR MUM”, for use in various products and services other than apparel and home accessories, there is no evidence showing these trademarks have actually been put in use in Taiwan. Thus, the IP Court was not persuaded that ZARA’s brand and business is as diversified as claimed by INDITEX in Taiwan.

3.     As to actual confusion, based on the records, the IP Court found the contested “SARACARES” is used in providing online insurance service, which is so different and distant from apparel and clothing business. Therefore, the IP Court was of the view that it is less likely for consumers to be confused due to the co-existence of the two trademarks. 

4.     Further, since the applicant of “SARACARES”, Law Insurance Broker Co. Ltd., is a reputable company specializing in insurance service, and is not INDITEX’s competitor in the same type of clothing business, the IP Court found it unreasonable to infer that the filing for “SARACARES” was based on applicant’s bad faith or intent to imitate. 

5.     In view of the above, among the services designated by “SARACARES” in class 35, the IP court found the retail and wholesale services for the apparel products might cause confusion with the famous “ZARA” trademarks, because consumers may misconceive that “SARACARES” belongs to the same “ZARA” trademark series. The IP court affirmed the IP Office’s finding in this respect.

6.     As for products and services that are not related to clothing, such as stationery, advertising and rental service, the IP Court determined that the likelihood of confusion caused by “SARACARES” should be balanced by the fact that its similarity with “ZARA” is not high, that “ZARA” as a trademark in Taiwan is well-known in apparel products but is rarely used in other type of goods, that there is little likelihood of confusion because of the difference of industries, and that the contested trademark was not filed out of bad faith. As such, the registration of “SARACARES” for goods in class 16 and rental and advertising services in class 35 should not be found violating Trademark Law.

 

Source: 

IP Office’s decision:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U2ZDYmRtQ1JDRGRxekx0eGxvMWs5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

IP Court’s decision: 

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c91%2c20210224%2c3

 

IP Court sided with LEGO in trademark infringement lawsuit, finding vendor’s use does not constitute fair use of trademark

In general, trademark right entitles its right holder to exclude others from using the trademark in the same or similar products or services, because such use may create confusion among the relevant consumers, making them believe the products they purchase come from the same source, while in fact, they do not. However, not every use of trademark would necessarily constitute actionable trademark use. It is because under certain context, the trademark is not used to identify the source of goods. For example, sometimes it is permissible for one to show other’s trademark in order to demonstrate or explain product compatibility.

 

Article 36.1.1 of Taiwan’s Trademark Law provides further guidance in this regard. Per Article 36.1.1, a registered trademark shall not entitle the proprietor to prohibit a third party from…… indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in relevant industry and not using it as a trademark. Nonetheless, it is not always clear whether the use is compliant with “honest practices”.

 

In 109-Ming-Zhuan-Su-Zi No. 27, the Intellectual Property Court (IPC) dealt with this issue. In this case, the plaintiff, LEGO Juris A/S (“LEGO”), filed trademark infringement lawsuit against a local vendor, who allegedly used plaintiff’s trademarks (see below) in selling Lego product. LEGO did not dispute that the products sold by the defendant are genuine, but argued that when marketing and promoting its business, the defendant illegally used LEGO’s trademarks on the advertising materials, such as the banners, exhibition board, and posters.

 

The defendant argued that the Lego stickers it used on the banners and exhibition board are all genuine products purchased from local market, so LEGO’s trademark right should be exhausted. The defendant further argued that its business name is also displayed on the banners, so there is no intent to use LEGO’s trademark, and the defendant should be exempt from LEGO’s trademark right. The IPC disagreed.

 

After taking a close look at the defendant’s banners and exhibition boards, the IPC noted that in comparison with the displayed Lego sign, the font size of defendant’s business name is quite small, which could hardly be noticed by consumers. If the true intent is to show the defendant’s business name, it makes no sense for the defendant to highlight LEGO’s stickers and make the real business name less visible. In fact, it would be unreasonable and unnecessary for the defendant to enlarge the Lego sign on its banners and posters. Thus, the IPC is not persuaded that defendant’s use is compliant with honest practices in the relevant industry.

 

As for defendant’s exhaustion defense, the IPC noted that the Lego stickers used by the defendant are genuine, and thus are subject to doctrine of exhaustion. However, the IPC held the view that the scope of exhaustion is limited to the resale of stickers, and shall not extend to defendant’s subsequent use for marketing or promoting the product it sold. When the defendant used the Lego stickers to promote the products it sold, such use has nothing to do with the resale of the stickers, and should not be subject to exhaustion doctrine.

 

In view of the above, the IPC ruled in favor of LEGO by entering an interlocutory decision, confirming defendant’s infringement liability. The IPC will review issue of damages at a later stage.

 

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,109%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c27%2c20210219%2c1