German fashion brand “BOSS” prevailed over “DOSS” in trademark opposition proceeding

On April 16, 2020, HUGO BOSS TRADE MARK MANAGEMENT GMBH & Co. KG (“HBTM”) filed trademark opposition against trademark “DOSS”, alleging the registration of “DOSS” would cause confusion with its famous “BOSS” trademarks (Reg. No. 419774, 1063553, 1552959, and 412330, see below).

The contested trademark, “DOSS” (Reg. No. 02037593, see below), was filed on July 19, 2019, and granted on January 16, 2020. “DOSS” was applied for use in goods under class 9, 14, 18, and 25. For goods under class 14, “DOSS” was designated for use in products like bracelet, jewelry box, watches, electronic watches, and clocks; for goods under class 18, “DOSS” was designated for use in bags, wallet, handbags, sports bags, suitcases, and backpacks; for goods under class 25, “DOSS” was designated for use in scarfs, headscarf, tie, hat, and belt.

 

HBTM contended that the registration of “DOSS” for goods under class 14, 28, and 25 at least violated Article 30.1.10 of Trademark Law, which prescribes that “a mark shall not be registered if such a mark is identical to or similar with other’s senior trademark and applied for use in identical or similar products or services, hence there exists likelihood of confusion among the relevant public.”

 

Taiwan’s IP Office (“TIPO”) sided with HBTM on July 29, 2021:

1.    Registrant of “DOSS” argues that there is significant difference because the first letter of “DOSS” is “D”, which is different from that of “BOSS”. Besides, the second letter “O” presented in “DOSS” is particularly stylized. However, TIPO finds these are minor differences, and opines that in its entirety “DOSS” still demonstrates similar visual impression with “BOSS”. Further, the pronunciation of “DOSS” and “BOSS” is also similar. TIPO therefore considers “DOSS” possess medium degree of similarity with “BOSS”.

2.    With regard to the designated products, TIPO notes that the asserted “BOSS” trademarks are also applied for use in similar or associated products, such as ring, tie, necklace, jewelry box, handbags, wallets, suitcase, belt, tie, belt, briefcase, etc. Thus, TIPO finds “BOSS” and “DOSS” both are applied for use in similar products, and the degree of similarity is high.

3.    Moreover, TIPO affirms that based on the submitted marketing materials, court decisions, and sales records, prior to the filing date of “DOSS”, HBTM’s “BOSS” trademarks have already become well-known in Taiwan, with greater familiarity and recognizability among the relevant consumers. To the contrary, the evidence of use of the “DOSS” trademark is limited to products such as Bluetooth earbuds, which is not the product class 14, 18, or 25. Thus, TIPO concludes that consumers should be more familiar with “BOSS” in the product field of class 14, 18, and 25.

4.    In view of the above, since “DOSS” is visually and verbally similar with “BOSS”, applied for use in similar goods under class 14, 18, and 25, and consumers are more familiar with “BOSS” due to HBTM’s continuous marketing and use in the local market, TIPO determines that “DOSS” is confusingly similar with “BOSS” per Article 30.1.10 of Trademark Law. Therefore, TIPO rules that the registration of “DOSS” should be cancelled accordingly.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SkErTXZBdzl3alF6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office found Chanel’s famous monogram distinguishable in trademark opposition

It has been well recognized in Taiwan that Chanel’s “CC” monogram (see below) is a well-known trademark in fashion goods such as leather products, perfume, boots, cosmetics, jewelry, and clothing. However, in a determination rendered by Taiwan’s IP Office (“TIPO”) on July 20, 2021, Chanel was not able to cancel a mark that allegedly used similar monogram in its trademark.

 

The contested trademark, “CHLIV” (Reg. No. 02030679, see below), was filed on April 29, 2019, and granted on December 16, 2019, designated for use in service under class 43, including coffee shop, mobile food stall, restaurant, hotel, burger shop, fast food truck, etc. The contested trademark was filed and owned by Chris Lin, the champion of the World Coffee Fest Latte Art 2016. According to Mr. Lin, "CHLIV" represents the luxury coffee brand he intends to develop in Taiwan. 

Chanel filed opposition on March 16, 2020, alleging that the monogram icon featured in the “CHLIV” trademark is confusingly similar with its famous “CC” monogram.

TIPO’s final determination did not side with Chanel based on the following reasons:

1.      While it is not disputed that Chanel’s “CC” monogram is famous and well-known among the relevant consumers in the field of fashion products at the time when the contested trademark was filed for application, TIPO finds the famous “CC” monogram is not similar with the contested trademark.

2.      More specifically, both trademarks feature combination of stylized circular curve, but the length of the arc lines is very different. TIPO also finds that in both trademarks the way and the pattern these arc lines overlap and connect with each other are also noticeably dissimilar. Moreover, the “CHLIV” presented in the challenged trademark makes it more dissimilar with Chanel’s “CC” monogram.

3.      Although Chanel’s “CC” monogram is highly distinctive and more well-recognized, there is evidence supporting the actual use of the challenged trademark. For example, there is photo showing the use of the challenged trademark in CAFÉ restaurant dated as early as August 31, 2019. Further, TIPO notes that there is no evidence showing actual confusion.

4.      Chanel argues that its business is diversified and its trademark has been used in other products, such as racket, surfing board, scooter, etc. However, TIPO finds the nature of these products are very different from the food and restaurant service designated by the challenged trademark. Therefore, TIPO determines that the relevant consumers should be able to distinguish the products and services represented by the two trademarks.

5.      Since the challenged trademark is dissimilar and not applied for use in similar goods or services, TIPO is convinced that the registration of the challenged trademark is based on good faith.

6.      Based on the aforesaid analysis, TIPO finds that while Chanel’s “CC” monogram is more famous and distinctive, such factors are balanced and neutralized by the findings that the challenged trademark is dissimilar, is designated for use in different kind of services, is registered out of good faith, and there is no evidence showing actual confusion. Hence, TIPO posits that there should be no confusion caused by the registration of the challenged trademark.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OUY2clNCaERqbXJLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Beer brand "CORONA" prevailed in trademark opposition against "CONAS"

 CERVECERIA MODELO DE MEXICO,S. DE R.L. DE C.V. (“CERVECERIA”), the registrant of “CORONA” trademarks (Reg. No. 01406009, 01406007, 01293268, and 01293266, see below) in Taiwan, filed opposition against CONA'S CO., LTD (“CONA”) on June 30, 2020, alleging that registration of CONA’s trademark shall be cancelled.

 

The contested trademark, “CONAS” (Reg. No. 02050781, see below), was filed on August 12, 2019, and granted on April 1, 2020. “CONAS” was applied for use in goods under class 32, including drinks such as soda water, beer, juice, mineral water, non-alcohol drinks, fruit vinegar drink, etc.

 On July 28, 2021, Taiwan’s IP Office (“TIPO”) ruled in CERVECERIA’s favor, finding registration of “CONAS” violates Article 30.1.10 of Trademark Law:

 

1.      Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark: 1) is identical with or similar to another person’s registered trademark or earlier filed trademark, and 2) 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 3) hence there exists a likelihood of confusion on relevant consumers.

2.      TIPO finds “CONAS” similar with CERVECERIA’s asserted “CORONA” trademarks, because both trademarks start with “CO” and, in general, end with “NA”, with minor difference of style and spelling. Besides, TIPO notes that the font of the contested trademark is also similar with that of CERVECERIA’s asserted “CORONA” trademarks. Accordingly, TIPO determines the contested trademark is visually and verbally similar with the asserted “CORONA” trademarks.

3.      As to the designated goods, TIPO opines that “CONAS” is also designated for use in beer, which is the same product designated by the asserted “CORONA” trademarks. Thus, TIPO finds the contested trademark is applied for use in the same products.

4.      TIPO further notes that while “CORONA” carries the meaning of “crown”, it is distinctive when being used for drink product. Meanwhile, there are sufficient records showing the asserted “CORONA” trademarks have been well-recognized among the relevant consumers through the promotion and marketing of the “CORONA” beverage products. However, TIPO finds there is little evidence showing the use of “CONAS” in its designated goods. Thus, TIPO concludes that consumers are more familiar with the asserted “CORONA” trademarks.

 

In view of the above, since “CONAS” is similar with “CORONA”, is designated for use in same kind of product, and there is no evidence of trademark use that could prove consumers are more familiar with “CONAS”, TIPO determines that registration of “CONAS” might cause confusion among the relevant public, and rules that the contested trademark shall be cancelled in view of Article 30.1.10 of Trademark Law.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YjhFeU0wZU1nMzYxd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office found no likelihood of confusion between Lenovo’s “YOGA” and E-Century’s “IOT PAD YOGA CONNECT”

On June 16, 2021, Taiwan’s IP Office (“TIPO”) denied Lenovo’s trademark opposition against the registered trademark “IOT PAD YOGA CONNECT”, finding Lenovo’s “YOGA” not similar with “IOT PAD YOGA CONNECT”, and there would be no confusion caused among the relevant public.

Lenovo’s trademark, “YOGA” (Reg. No. 01667590, see below), was filed on September 27, 2012 (priority date: March 30, 2012 ), and designated for use in goods under class 9, including computer, laptop, software, etc.

The challenged trademark, “IOT PAD YOGA CONNECT” (Reg. No. 02025626, see below), was filed by E-Century on January 19, 2019, and granted on December 1, 2019, also designated for use in goods under class 9, including computer hardware, software, mouse pad, internet equipment, mobile phone, touch panel, communication equipment, mobile power device, etc.

 Lenovo filed opposition on February 27, 2020, alleging the registration of the challenged trademark would violate Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law. However, TIPO did not side with Lenovo in its final determination.  

 

1.     TIPO finds the degree of similarity between “IOT PAD YOGA CONNECT” and “YOGA” is low. The only similarity between the two trademarks is the word “YOGA”. However, TIPO notes that “YOGA” is an ordinary word that has been used in other registered trademarks. Ordinary consumers are less likely to use “YOGA” alone to distinguish the source of the supplied goods or services. Additionally, the font size of “YOGA” presented in “IOT PAD YOGA CONNECT” is relatively small. As such, when being viewed in its entirety, the word “YOGA” in “IOT PAD YOGA CONNECT” would not be the main distinctive portion. Moreover, there are graphical drawings displayed in “IOT PAD YOGA CONNECT”, which makes the challenged trademark more distinguishable from Lenovo’s word mark “YOGA”. Therefore, the similarity between the two trademarks is low.

2.     As to the designated goods, TIPO opines that some of the designated goods, such as computer hardware, software, mouse pad, and internet equipment, indeed are similar or associated with those designated by Lenovo’s “YOGA”. However, TIPO notes, there are other products that are dissimilar and less relevant with the designated goods of Lenovo’s “YOGA”, such as mobile phone, mobile power device, etc.

3.     As to distinctiveness, TIPO affirms that both “YOGA” and “IOT PAD YOGA CONNECT” demonstrate certain degree of distinctiveness when being used in products under class 9.

4.     While it is undisputed that Lenovo’s “YOGA” has been registered as trademark in multiple jurisdictions around the globe, and that the relevant product lines, e.g., YOGA BOOK, have been very successful in terms of their sale and market share, TIPO finds these records insufficient to show “YOGA” has already become well-known when application for the challenged trademark was filed, because these documents either do not directly show the use of Lenovo’s trademark “YOGA”, or lack the corresponding date of use.

 

In view of the above, considering that the records are insufficient to show Lenovo’s “YOGA” has achieved well-known status, that the degree of similarity between the two trademarks is low, that both of them demonstrate certain degree of distinctiveness, and that they are not applied for use in exactly the same kind of products, TIPO finds the registration of “IOT PAD YOGA CONNECT” is not based on bad faith and would not cause confusion with Lenovo’s “YOGA” trademark. Hence, Lenovo’s opposition is denied accordingly.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YnpwWmYyOVl2cUJhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

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