Taiwan’s IP Office cancelled “AODI” in view of likelihood of confusion with German Auto Giant’s famous trademark “AUDI”

On January 14, 2020, German automaker AUDI AG filed opposition against “AODI”, contending that registration of “AODI” would cause confusion with its famous trademarks “AUDI” (Reg. No. 01768501, see below).

The contested trademark “AODI” (Reg. No. 02017550, see below), was filed on April 11, 2019, and was granted on October 16, 2019, designated for use in services under class 35, including retail and wholesale service for electrical appliances, hardwares, telecommunication equipments; intermediary service for the sale of second-hand products; agency for export and import; and distribution of various products of foreign manufacturers. 

 AUDI AG alleged that the registration of “AODI” violates, among the others, Article 30.1.11 of Trademark Act, which provides that a trademark shall not be registered if such a mark is similar with other’s well-known trademark, and hence there exists likelihood of confusion among the relevant public. Taiwan’s IP Office (“TIPO”) agreed, and made its determination on June 28, 2021:

 

1.     TIPO affirmed that AUDI AG’s “AUDI” is a well-known trademark in the field of automobile and its relevant services. “AUDI” as a trademark was filed for registration in 2015, and has been used in developing the relevant products and services in Taiwan since then, including the maintenance service and exhibiting centers. The brand “AUDI” was also ranked NO. 44 in Interbrand’s 100 Best Global Brand in 2015. Currently, there are more than 10 exhibiting centers that provide the sale and distribution service for “AUDI”. Thus, when the contested trademark “AODI” was filed on April 11, 2019, “AUDI” as a trademark is already well-known among the relevant public.

2.     As to similarity, although the contested trademark “AODI” presents an additional earth icon underneath, TIPO found such icon insufficient to distinguish “AODI” from the famous “AUDI” trademark, because the earth icon is not distinctive and is less likely to form a strong impression in the consumer’s mind. The word mark “AODI” should still be the main portion of the contested trademark. Since “AODI” and “AUDI” share the same letters “A”, “D”, and “I”, with only minor difference in their second letters, TIPO found “AODI” and “AUDI” visually and verbally similar with each other.

3.     In comparison to the marketing materials submitted by AUDI AG, TIPO noted the evidence submitted to support the use of “AODI” trademark was quite thin. Moreover, There is evidence showing that AUDI AG has expanded the brand territory of “AUDI” to products such as clothing, toys, apparels, glasses, bags, watches, timer, and camera; and to services such as transportation, maintenance, and education. Therefore, TIPO determined that local customers should be more familiar with “AUDI”.

4.     TIPO further noted that since there are lots of electronic devices installed and used in an automobile, and it is common for car companies to run their own used cars business, the services that “AODI” is applied for use, like intermediary service for the sale of second-hand product, are relevant and associated with the products and services represented by “AUDI”.  

 

In view of the above, given that “AUDI” is more famous and recognizable among the relevant public, that there is considerable similarity between “AODI“ and “AUDI”, and that “AODI” is applied for use in services that are associated with products and services designated by “AUDI”, TIPO determines that “AODI” is confusingly similar with AUDI AG’s well-known “AUDI”. 

 

Based on the aforesaid reasons, registration of “AODI” is cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4REVHNFJsK3J5YXNXUFRCNXVXcXBTdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Court ruled that LINUX’s “OPENCHAIN” is not confusingly similar with 7-11’s “OPEN-Chan”

“OPENCHAIN”, the registered trademark held by The LINUX FOUNDATION (“LINUX”) in Taiwan (Reg. No. 01960000, see below), was contested on March 15, 2019 by President Chain Store Corporation (“PCSC”), the retail giant that operates popular convenience stores. PCSC alleged that the registration of LINUX’s “OPENCHAIN” would cause confusion with PCSC’s registered trademark “OPEN-Chan”.

 

According to PCSC, the asserted trademarks, “OPEN-Chan” (Reg. No. 01616135 and 01611368, see below), are the nickname of PCSC’s popular cartoon figure, OPEN ちやん, which has become very famous among the relevant consumers due to its continuous use on the relevant services. PCSC’s trademarks are designated for use in goods under class 9 (telephone, IC Card, internet equipment, communication devices, etc.) and services under class 41 (publications of various kinds of papers, professional training, educational information, etc.)

 

The contested trademark, “OPENCHAIN”, was filed on March 30, 2016, and granted on December 16, 2018, designated for use in goods under class 9 (including: downloadable electronic publications of teaching materials, brochures, proposals, technical standards, white papers or manuals for software programs that promote license and policy compliance, etc.), and services under class 35 (management service for the license of other’s products or services), 41 (educational training services), and 45 (license and legal service for software development business). 

 

Taiwan’s IP Office (TIPO) found in LINUX’s favor on May 28, 2020, determining that although “OPENCHAIN” is similar with “OPEN-Chan”, and part of the services designated by “OPENCHAIN” under class 41 are similar with those by “OPEN-Chan”, the relevant public should be able to distinguish “OPENCHAIN” from “OPEN-Chan”. The reasons are that both “OPENCHAIN” and “OPEN-Chan” are distinctive, they are designated for use in different kind of goods, and there are sufficient records showing “OPENCHAIN” has been put in profound use by LINUX since 2015 after its inception in LinuxCon Europe, and thus is well-recognized by the relevant consumers. 

 

PCSC, after failing to vacate TIPO’s determination in the Appeal Board of Ministry of Economic Affairs, filed administrative lawsuit with the IP Court, requesting TIPO’s aforesaid  determination be vacated. 

 

PCSC argued that the registration of “OPENCHAIN” violates Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law. The IP Court, nonetheless, sided with LINUX in its decision rendered on May 27, 2021:

1.     As to Article 30.1.10, firstly, the IP Court found there is only medium degree of similarity between “OPENCHAIN” and “OPEN-Chan”. While the two trademarks are visually and verbally similar with each other, LINUX’s “OPENCHAIN” implies the meaning of “open source software supply chain”, while PCSC’s “Open-Chan” refers to the name of its cartoon figure OPENちやん. As a result, the two trademarks are conceptually dissimilar. 

2.     As to similarity of the designated goods, PCSC argued that “OPENCHAIN” is applied for use in downloadable publications, which is also based on the operation of internet equipment. Since “OPEN-Chan” is applied for use in internet equipment, the downloadable publications designated by “OPENCHAIN” should be found associated with internet equipment as designated by PCSC’s “OPEN-Chan”. However, the IP Court disagreed, and found PCSC’s argument too broad. It is because there are so many services and goods made available via the internet nowadays, and allowing PCSC’s argument would inappropriately expand the scope of similarity when it comes to internet equipment. The IP Court thus determines that the goods designated by “OPEN-Chan” are not similar with those designated by LINUX’s “OPENCHAIN” in terms of their nature, function, and purpose.

3.     The IP Court affirmed TIPO’s finding that both trademarks are distinctive. As to the use of trademarks, the IP Court also agreed with TIPO that PCSC’s use of “OPEN-Chan” is not as strong as it claimed. Most of the evidence submitted by PCSC emphasizes its cartoon figure OPENちやん, and there is little evidence showing the use of trademark “OPEN-Chan”. Thus, the evidence is insufficient to show PCSC’s “OPEN-Chan” is well-known.

4.     Furthermore, the IP Court noted that the customer base of LINUX’s “OPENCHAIN” is substantially different from that of PCSC’s “OPEN-Chan”, because the former pertains to industrial standard and its products or service are usually accessed by software professionals, while the latter pertains to retail service and products for consumers. Thus, the registration of “OPENCHAIN” is unlikely to cause confusion with “OPEN-Chan” among the relevant public. As a result, the IP Court found no violation of Article 30.1.10 of Trademark Law.

5.     Since there is no evidence showing PCSC’s “OPEN-Chan” is a well-known trademark, and the designated goods of “OPENCHAIN” are different from those of “OPEN-Chan”, the IP Court further found there is no violation of Article 30.1.11 and 30.1.12 of Trademark Law. 

 

In view of the above, the IP Court affirmed TIPO’s determination, and rejected PCSC’s claims.     

 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c128%2c20210527%2c2

 

Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law:

A trademark shall not be registered in any of the following: 

………

(10) being 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, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper. 

(11) 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, unless the proprietor of the said well-known trademark or mark consents to the application.

(12) 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, unless the proprietor of the said earlier used trademark consents to the application.

See: https://law.moj.gov.tw/ENG/LawClass/LawAll.aspx?pcode=J0070001

Amazon’s “ECHO” beat “ECGO” again in trademark opposition proceeding

AMAZON TECHNOLOGIES, INC. (“Amazon”), the trademark registrant of “ECHO” (Reg. No. 01966088, see below) in Taiwan, filed opposition on May 30, 2019, alleging the registration of trademark “ECGO” would violate Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

The contested trademark, “ECGO” (Reg. No. 01974458, see below), was filed on July 30, 2018, and granted on March 1, 2019, designated for use in services under class 37, including instrument installation and repair, car maintenance and repair, vehicle repair station, vehicle lubrication, vehicle battery charging, tire refurbishment, etc.

Taiwan’s IP Office (“TIPO”) ruled in favor of Amazon on May 17, 2021, determining that the contested trademark violated at least Article 30.1.11 of Trademark Act:

1.    Article 30.1.11 of Trademark Act provides that a trademark shall not be registered if such a mark is:

1)      identical with or similar to another person’s well-known trademark or mark, and

2)      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.

2.    TIPO finds Amazon’s ECHO represents the brand of Amazon’s popular smart speaker powered by “Alexa”, the AI-driven voice assistant. Since 2014, Amazon has successfully registered series of trademarks, including “ECHO”, “AMAZON ECHO”, “ECHO DOT”, “AMAZON ECHO DOT”, in numerous jurisdictions such as the U.S., Australia, EU, Japan, Hong Kong, UK, Singapore, South Korea, and Taiwan. Through Amazon’s continuous marketing and promotion, “ECHO” has gained the status of well-known trademark in Taiwan prior to July 30, 2018, the filing date of the contested trademark.

3.    The contested trademark “ECGO” and Amazon’s “ECHO” are visually and verbally similar with each other, because both consist the letters “E”, ”C”, and ”O”, with the minor difference in their third letters, i.e., “G” vs “O”. Thus, TIPO opines that there is medium degree of similarity.

4.    Turning to the strength of trademark, TIPO finds Amazon’s “ECHO” is distinctive, and, based on the evidentiary materials submitted by Amazon, recognizes that “ECHO” has become a well-known trademark in Taiwan. Thus, Taiwan’s consumer is more familiar with Amazon’s “ECHO”.

5.     Further, TIPO notes that there are sufficient records showing Amazon’s “Alexa” has been applied to the field of automobile (e.g., Ford and BMW). For example, by calling “Alexa” and activating the system “Amazon Echo” or “Echo dot” installed in a car, the driver could easily access various kinds of information regarding the vehicle, including the fuel condition, tire pressure, mileage, and the power of battery. Accordingly, since the services designated by the contested trademark pertain to car maintenance and repair, vehicle repair station, vehicle lubrication, and vehicle battery charging, TIPO posits that consumers may find these services associated with those provided by Amazon’s “ECHO”.

 

Based on the aforesaid reasons, TIPO is convinced that the registration of “ECGO” would cause confusion with Amazon’s well-known “ECHO”, and determines that the contested trademark shall be cancelled per Article 30.1.11 of Trademark Act.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UlErRHljTEVxU2J4TWNIODg4Uk1Wdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Hurley Phantom C.V. successful in trademark opposition for its iconic “H” logo

On May 20, 2021, Taiwan’s IP Office (“TIPO”) found the “H” logo registered by Xiang-Hao Clothing Limited (“XH”) confusingly similar with the trademark held by the Hurley Phantom C.V. (“Hurley”), and cancelled XH’s trademark accordingly.

 

Hurley’s asserted trademark, i.e., the No. 01086990 trademark (hereafter ‘990 trademark, see below), was filed on June 6, 2003, and granted on February 16, 2004, designated for use in goods under class 25, including clothes, boots, scarves, ties, hats, etc. 

 

The contested trademark, XH’s No. 01993040 trademark (hereafter ‘040 trademark, see below), was filed on December 22, 2018, and granted on June 16, 2019, designated for use in goods under class 25, such as shirts, pants, jacket, sport wears, suits, school uniforms, vest, etc. 

 

Hurley filed opposition against XH’s ‘040 trademark on September 16, 2019, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. TIPO sided with Hurley, finding registration of XH’s ‘040 trademark violated 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 similar with other’s registered trademark and is applied for use in goods or services that are similar with those designated by other’s registered trademark, and hence there exists likelihood of confusion on the relevant public.

 

2.     TIPO first examined the similarity between Hurley’s ‘990 trademark and XH’s ‘040 trademark. TIPO noted that Hurley’s trademark looks like a pair of two giant brackets, while XH’s ‘040 trademark presents additional elements, such as the the backdrop of a four point star and the short dash “-“ in the middle of XH’s “H” logo. However, TIPO opined that visually and conceptually, XH’s trademark still forms a general impression of “H”, which is highly similar with Hurley’s trademark.

 

3.     While XH argued that its contested logo is composed of “X” and “H”, which features the abbreviation of its English company name “Xiang-Hao”, TIPO was of the view that the reason behind the design of a trademark is not always known by the consumers. As such, the connection between XH’s company name and its trademark is not a factor that should be considered when determining similarity.

 

4.     There is less dispute on the similarity between the goods designated by XH’s and by Hurley’s trademarks, as they are both applied for use in apparel and clothing products, which serve similar functions and purposes. Further, TIPO found Hurley’s “H” design unique and distinctive, so it is likely that consumers would use this “H” logo to identify the source of goods or services. 

 

5.     Although XH and Hurley both submitted evidence showing the sale and distribution of their products in Taiwan, TIPO found these evidentiary materials merely showed that Hurley’s and XH’s products indeed were sold in Taiwan, but were insufficient to show their respective market shares and volume of sale. Thus, TIPO was unable to determine which trademark is more popular and enjoys higher recognizability in Taiwan.

 

In view of the above, while TIPO was neutral on whether Hurley’s trademark is more famous than XH’s trademark in Taiwan, TIPO still found XH’s ‘040 trademark confusingly similar with Hurley’s ‘990 trademark. It is because XH’s ‘040 trademark, like Hurley’s ‘990 trademark, also features similar “H” design, and is applied for use on similar products. These similarities, plus the distinctiveness of Hurley’s “H” design, are likely to make consumers believe that XH’s products are associated with or originated from Hurley. Therefore, XH’s trademark was cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UmV4NGsrZ2h1SFc3Q3pKSnREcU83Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Blackberry prevailed in trademark opposition against “RENTBERRY”

On April 15, 2020, Blackberry Limited (“Blackberry”) filed trademark opposition against Rentberry Inc. (“Rentberry”), alleging that the registration of “RENTBERRY” would cause confusion with Blackberry’s “BERRY” and “BLACKBERRY” trademarks (Reg. No. 01288822, 00155052, 01972324, and 01650599, see below)

The contested trademark, “RENTBERRY”, was filed by Rentberry on February 27, 2019, and was granted by Taiwan’s IP Office (“TIPO”) on January 16, 2020 (Reg. No. 02036834, see below). “RENTBERRY” was designated for use in services under class 42, including SaaS, server hosting, computer system design, cloud computing, software consulting, electronic data storage service, etc.

On May 25, 2021, TIPO determined that the contested trademark “RENTBERRY” should be canceled for violating 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 a mark is identical with or similar to another person’s registered trademark and to be applied for use in goods or services identical with or similar to those for which other’s registered trademark is protected, and hence there exists likelihood of confusion on the relevant consumers. 

2.     TIPO finds “RENTBERRY” similar with Blackberry’s “BERRY” and “BLACKBERRY”, for both feature the word “BERRY”. Although the initial word of the contested trademark is “RENT”, which is different from “BLACK”, the initial word of “BLACKBERRY”, TIPO considers “BLACK” is not distinctive and consumers would still focus on the word “BERRY”. Therefore, the appearance of “RENTBERRY” is considered similar with Blackberry’s “BLACKBERRY” and “BERRY”.

3.     As to the designated goods and services, TIPO notes that Blackberry’s trademarks are also applied for use in goods under class 9 and services under class 42, including products like data process equipment, computer, tablet computer, computer software; and services such as SaaS, technical support, software design and development, cloud computing, etc. Thus, the services designated by “RENTBERRY” are highly relevant or similar with those designated by “BLACKBERRY” and “BERRY”.

4.     Additionally, “BLACKBERRY” and “BERRY” are distinctive, for they have no relevancy with the nature or function of the designated products and services under class 9 and class 42. 

5.     Moreover, TIPO finds there is sufficient evidence showing Blackberry has been actively and continuously using its “BLACKBERRY” and “BERRY” trademarks, even though Blackberry’s share in mobile phone market has declined. For example, records showed that in 2017, Blackberry appointed one local agency and 3~4 first-rate distributors in Taiwan for developing and promoting its “BLACKBERRY” brand for cell phone business. Thus, TIPO opines that “BLACKBERRY” and “BERRY” are more famous than Rentberry’s “RENTBERRY” among the relevant consumers.

 

In view of the above, since “RENTBERRY” is similar with “BLACKBERRY” and “BERRY”, is applied for use in similar services, and “BLACKBERRY” and “BERRY” are distinctive and more famous among the relevant public, TIPO concludes that it is likely that the registration of “RENTBERRY” would cause confusion with Blackberry’s “BLACKBERRY” and “BERRY”. Therefore, the contested trademark “RENTBERRY” is canceled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4czIyOU1rZ0wreGFQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Dior prevailed in opposition proceeding for its “CD” trademark

On February 3, 2020, Parfums Christian Dior S.A. (“Dior”) filed opposition against a  trademark registered by a third party, alleging that registration of the contested trademark would cause confusion with Dior’s well-known “CD” trademark (e.g., Reg. No. 01719065, see below).

The contested trademark, which also features a stylized “CD” (Reg. No. 02018695, see below), was filed on March 27, 2019, and granted on November 1, 2019. The contested trademark is designated for use in goods under class 3, including cosmetics, perfumes, hair conditioner, incense, skin care, animal cleaning agent, cosmetics for animal, air fragrance, etc. 

Taiwan’s IP Office (“TIPO”) sided with Dior on April 29, 2021, finding the contested trademark shall be cancelled based on Article 30.1.11 of Trademark Law:

 

1.     Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such mark is identical to or similar with another person’s well-known trademark, and hence there exists a likelihood of confusion on the relevant public.

2.     With regard to the status of Dior’s “CD” trademark, TIPO confirms that before the filing date of the contested trademark, i.e., March 27, 2019, Dior’s cited trademark has become famous in products like cosmetics and perfume. TIPO’s finding is based on Dior’s worldwide registration records of its “CD” trademark, evidence showing Dior’s continuous use of “CD” trademark since 1952, and all the other records of marketing and media exposure in Taiwan starting from 2014.

3.     The contested trademark features two stylized letters “C” and “D”, which are the same letters presented in Dior’s aforesaid famous trademark. Since the contested trademark is verbally and visually similar with Dior’s well-known “CD” trademark, TIPO opines the two trademarks are highly similar with each other, and the mere difference in font style is not enough for ordinary consumers to distinguish the contested trademark from Dior’s famous “CD” trademark.  

4.     As to the distinctiveness of Dior’s famous trademark, TIPO finds Dior’s trademark highly distinctive because “CD” has no bearing with the nature or function of the products that the trademark is designated for use. TIPO agrees that “CD” as a trademark, when being used in cosmetics like lipstick and pressed powder, demonstrates high distinctiveness among the relevant consumers.

5.     Further, TIPO notes that Dior submitted relevant evidence showing its “CD” trademark has extended into beauty industry. For example, TIPO finds that in addition to cosmetics and perfume, Dior’s “CD” trademark has been put in use on other products like candles and cosmetic case. Moreover, TIPO’s aforesaid finding is further strengthened by the evidence showing that in the famous Taipei 101 Tower, Dior provides beauty and skin care service through its physical store. Therefore, TIPO believes that Dior’s cited “CD” trademark has been put in diversified use.   

 

In view of the above, since the contested trademark is highly similar with Dior’s famous and distinctive “CD” trademark, is applied for use in cosmetic products that serve similar or associated purpose, and Dior has put its “CD” trademark in diversified use, TIPO agrees that there is likelihood that the registration of the contested trademark would cause confusion on the relevant consumers. As such, TIPO rules that the contested trademark should be cancelled.   

 

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dzJMNTlTTFdmWUNHSnQ5R2lWM0ladz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Online streaming giant HULU successful in cancelling “hulu hulu ク一ル ク一ル”, a trademark that is not applied for use in streaming service

On November 15, 2019, the leading streaming service provider, HULU LLC, filed trademark opposition in Taiwan’s IP Office (“TIPO”), alleging the registration of “hulu hulu ク一ル ク一ル” would cause confusion with its famous trademarks “HULU” and “hulu” (Reg. 01357122, 01514558, 01930932, and 01953391, see below).

 

The contested trademark, “hulu hulu ク一ル ク一ル”, was filed on January 7, 2019, by YA OU MEI International Trading Co. (“YOM”). The trademark was granted on August 16, 2019 (Reg. No. 02006595, see below), designated for use in: 1) goods under class 3, such as air fragrance, deodorant, toothpaste, tooth powder, breath fresheners, mouthwashes, toothbrushes, etc.; and 2) services under class 35, including agent for distribution of domestic and foreign products, agent for import and export, department store, purchasing service, convenience store, supermarket, TV shopping, online shopping, and retail and wholesale for beauty appliances.

HULU LLC argued that the contested trademark violated, among the others, Article 30.1.11 of Trademark Law. TIPO agreed and sided with HULU LLC on May 3, 2021:

1.      Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such a mark is similar with other’s famous trademark, and hence there exists likelihood of confusion among the relevant public.

2.      Based on the records submitted by HULU LLC, including the active global trademark registration for “HULU” and “hulu” across areas including EU, Unites States, Australia, Japan, Singapore, and China; and the continuous media exposure in the local market since its inception in 2007, TIPO confirmed that the cited “HULU” and “hulu” trademarks have become well-known for internet video streaming platform and the relevant services.

3.      As for similarity, the contested trademark “hulu hulu ク一ル ク一ル” and the cited trademarks “HULU” and “hulu” both feature the word mark “hulu”, with the difference in that there is Japanese “ク一ル” presented in YOM’s contested trademark. However, such difference, from TIPO’s viewpoint, is insufficient, because the font size of the Japanese “ク一ル” is quite small. Ordinary consumers would still view “hulu” as the main distinctive portion of the contested trademark. Thus, TIPO finds “HULU” and “hulu hulu ク一ル ク一ル” similar with each other.

4.      TIPO further notes that “HULU” is very distinctive. According to its records, except for HULU LLC’s “HULU” and YOM’s “hulu hulu ク一ル ク一ル”, there is only one other “HULU” trademark registered by a third party (Reg. No. 01386252) for use in food products. Thus, “HULU” is unique, and consumers are inclined to use it to identify the source of provided goods and services.

5.      Although YOM’s contested trademark is not designated for use in video streaming service, TIPO finds that HULU LLC’s “HULU” and “hulu” trademarks have been applied for use in diversified products and services, such as marketing consultation, education, entertainment, backpacks, key bags, etc. Thus, TIPO considers there is likelihood that in addition to video streaming service, HULU LLC’s “HULU” and “hulu” will be put in use on other types of products or services.

 

In view of the above, given that “HULU” and “hulu” are highly distinctive and have become well-known, that YOM’s “hulu hulu ク一ル ク一ル” is similar with HULU LLC’s well-known trademarks, and that it is likely that HULU LLC’s cited trademarks may be used in diversified kinds of products, TIPO determines that YOM’s “hulu hulu ク一ル ク一ル” may cause the relevant public to misconceive that YOM’s product is associated with HULU LLC’s product or service. As a result, TIPO rules that YOM’s contested trademark shall be cancelled.

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bm45R25kamxvVDhQa3lsaTJEcDZ6QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true