“AVEDA” rolled over “AROMAVEDA” in trademark opposition proceeding

On September 29, 2021, Taiwan’s IP Office (“TIPO”) cancelled “AROMAVEDA” after finding such trademark confusingly similar with “AVEDA”, the famous marks registered by AVEDA Corporation (Reg. No. 00146525, 00540871, 00536080, 00533060, and 01221016, see below).

 

The contested trademark, “AROMAVEDA” (Reg. No. 02000548, see below), was filed on January 19, 2019, and granted on August 1, 2019, designated for use in goods under class 3, including cosmetics, hair dyes, shampoos, conditioners, polishes, fragrances, essential oil, tea bath bag, perfume powder, animal hair cleansers, air fragrance, etc. AVEDA Corporation filed opposition on October 31, 2019, contending that “AROMAVEDA” violates Article 30.1.11 of Trademark Law.

 

TIPO sided with AVEDA Corporation:

1.    Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is 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 said well-known trademark or mark. 

2.    With regard to the well-known status of “AVEDA”, based on the worldwide trademark registration records, the commercial success, and the continuous efforts of marketing since 1995, TIPO is convinced that “AVEDA” as a trademark is well-known in the product fields of cosmetics, hair salon, and hair dressing on or before the filing date of trademark application for “AROMAVEDA”.

3.    With regard to similarity, TIPO is of the view that in general, “AROMAVEDA” would still be perceived as combination of “AROMA” and “AVEDA”, which makes “AROMAVEDA” visually similar with “AVEDA”. Besides, conceptually, since “AROMA” is an ordinary word, ordinary consumers may view “AVEDA” as the main portion when seeing “AROMAVEDA”, and find “AROMAVEDA” related or associated with “AVEDA”. 

4.    Since “AVEDA” is not related to the nature or function of its designated products, TIPO considers “AVEDA” highly distinctive, and consumers in Taiwan should be more familiar with “AVEDA” in view of the voluminous materials of marketing and sales submitted by AVEDA Corporation. 

5.    Considering that “AVEDA” is well-known in the field of cosmetic and hair product, that ordinary consumers would find “AROMAVEDA” similar with “AVEDA”, that “AROMAVEDA” is also applied for use in cleaning and cosmetic products, and that consumers are more familiar with “AVEDA”, TIPO concludes that the contested trademark “AROMAVEDA” may cause confusion with “AVEDA” among the relevant consumers. As such, “AROMAVEDA” is cancelled in accordance with Article 30.1.11 of Trademark Law.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cDRCVUFWdTNpSzNidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office found no confusion between “水頭家WATER BOSS” and “BOSS”

On September 30, 2021, Taiwan’s IP Office (“TIPO”) denied trademark opposition filed by HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO. KG (“HUGO”), finding registration of “水頭家WATER BOSS” would not cause confusion with HUGO’s famous “BOSS” and “HUGO BOSS” trademarks (see below).

 

In its opposition filed on May 14, 2020, HUGO argued that its “BOSS” and “HUGO BOSS” trademarks, such as No. 00174072, 00279546, 00414384, 00173436, 01552958, and 01965218, have become well-known in apparel, watches, glasses, perfume, and luxury products after years of its successful and continuous marketing and sales.

Such high degree of distinctiveness and fame might be confused or diluted by the registration of “水頭家WATER BOSS” (Reg. No. 02042268, see below), because, according to HUGO, the contested trademark also features the same word “BOSS”, and is applied for use in associated services under class 35, including agency service for import or export, advertising, retail service for beverage, rental service for vendor machine, etc.

However, TIPO does not side with HUGO:

1.     HUGO contends that registration of “水頭家WATER BOSS” would violate Article 30.1.11 of Trademark Act, which provides that: “A trademark shall not be registered if such a mark is 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.” For Article 30.1.11 to be applicable, there must be similarity between the cited well-known trademark and the contested trademark.

2.     Here, although it is well established that HUGO’s cited trademarks, “BOSS” and “HUGO BOSS”, are well-known, TIPO finds the contested trademark “水頭家WATER BOSS” is dissimilar. While it is true that both trademarks contain the word “BOSS”, the contested trademark further present additional elements, including “water” and the Chinese characters “水頭家”, which denotes “boss of water”. As such, TIPO is of the view that the contested trademark is distinctive when being used for service under class 35 (e.g., agency service for import or export, advertising, etc.), and ordinary consumers would find “水頭家WATER BOSS”, in its entirety, different from HUGO’s famous trademarks.

3.     HUGO argues that when seeing the contested trademark, consumers would focus on the word “BOSS” only, because such word is already famous. TIPO disagrees. TIPO finds “水頭家WATER BOSS” as a whole distinctive, and thus consumers would view the contested trademark in its entirety, rather than particularly focus on the word “BOSS”.

4.     Based on the above reasons, since the similarity between the two trademarks is low, TIPO determines that it is less likely for consumers to confuse “水頭家WATER BOSS” with HUGO’s famous “BOSS” or “HUGO BOSS” trademarks. HUGO’s opposition is therefore denied.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MktqL1VsT3ovTk9QdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office rejected application for “Sup” in view of similarity with Chapter 4’s famous “Supreme” trademark

Chapter 4 Corp. (“Chapter 4”), the registrant of the famous “Supreme” trademark in Taiwan (See below), successfully prevented APIYOO Holding Co. Ltd. (“APIYOO”) from acquiring registration for its “Sup” trademark.

APIYOO’s application was filed on October 18, 2019 (See below), designated for use in goods under class 8, including electric razor, razor blade, nail trimming tools, iron, curler, etc. When APIYOO’s application was still pending, Chapter 4 submitted a third-party opinion letter to Taiwan’s IP Office (“TIPO”), contending that APIYOO’s application for “Sup” shall be rejected in view of likelihood of confusion with Chapter 4’s cited “Supreme” trademarks (Reg. No. 01292538, 01466427, 01511833, 01560560, 01592983, 01768673, and 01813902).

On August 23, 2021, TIPO found in Chapter 4’s favor, rejecting APIYOO’s application based on 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 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.

2.   With respect to determination of similarity between “Sup” and “Supreme”, TIPO determined that “Sup” is composed of “s”, “u”, and “p”, which are identical with the first three letters of “Supreme”. Thus, TIPO opines that ordinary consumers may find “Sup” associated with “Supreme”, because “Sup” and “Supreme” are verbally and visually similar with each other.

3.      With respect to the status of “Supreme”, TIPO was convinced by the records submitted by Chapter 4, which showed that since 1994, “Supreme” as a trademark has been registered and put in use by Chapter 4 throughout the world, including in China, EU, Japan, U.S., UK, and Taiwan. TIPO also affirmed that In the product field of apparel, shoe, and gloves, “Supreme” has attained the status of well-known trademark.

4.   Besides, TIPO also noted that since 2016, Chapter 4 has started using “Sup” in conjunction with its famous “Supreme” trademark, and that application for “Sup” has been filed in Norway, U.S. and Japan. Thus, based on the records of continuous trademark use and successful product sale in Taiwan, TIPO was of the view that consumers in Taiwan shall be more familiar with Chapter 4’s “Supreme”. Upon seeing “Sup”, consumers would be more inclined to think of Chapter 4’s “Supreme”, rather than APIYOO’s “Sup”.

5.   Lastly, TIPO noted that “Supreme” is highly distinctive after Chapter 4’s continuous use and marketing, and that it has been put in use on various kinds of products, including co-branded products like suitcase, shoes, case for mobile phone, purse, and diving glasses in collaboration with brands such as RIMOWA, GUCCI, CHANEL, NIKE, and LV. Hence, TIPO was convinced that “Supreme” is used and well recognized in various types of products aside from clothing, shoes, and glove.

 

In view of the above, since “Supreme” is well-known and found similar with “Sup”, consumers are more familiar with “Supreme”, and “Supreme” has been used in various kinds of products, TIPO determines that registration of “Sup” may cause consumers to misconceive that the products supplied by APIYOO are associated with or related to products supplied by Chapter 4. As a result, APIYOO’s “Sup” trademark application was rejected by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a25KQVZwSVhyelBSdnZ0dEtxZDg1Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Chanel successfully cancelled “COCORO” in view of similarity with its famous “COCO” trademark

On August 30, 2021, Taiwan’s IP Office (TIPO) determined that “COCORO”, a trademark held by COCORO Fashion Co. Ltd. (“CFC”), should be cancelled for likelihood of confusion with Chanel’s well-known trademark “COCO”.

 

Before CFC filed trademark application for its “COCORO”, Chanel’s “COCO” trademark series, including number 00624792, 00670814, and 00859991 (see below), have been confirmed by TIPO and Taiwan’s IP Court as well-known trademarks in the fields of perfumes, fashion clothing, cosmetics, and leather goods. On June 1, 2020, Chanel filed opposition against CFC, contending that CFC’s COCORO trademark violated Article 30.1.10 of Trademark Act*.

 

CFC’s contested trademark, “COCORO” (Reg. No. 02044448, see below), was filed on March 21, 2019, and granted on March 1, 2020, designated for use in goods such as clothes, sportswear, underwear, skirts, coats, jackets, shoes, sweaters, etc.

Although CFC’s “COCORO” ends with “RO”, which is different from Chanel’s “COCO”, TIPO considers such difference minor. Additionally, since both “COCORO” and “COCO” start with the same letters “CO”, TIPO is of the view that the similarity caused by the initial letters would outweigh the dissimilarity created by the ending letters, and make consumers more likely to think the two trademarks are originated from the same source. Thus, TIPO determines that “COCORO” is visually and verbally similar with “COCO”.

 

As to the designated goods, TIPO finds that Chanel’s “COCO” trademarks are also applied for use in goods such as apparel, blouses, shorts, pants, skirts, shirts, vests, gloves, boots, etc. These products, TIPO notes, like those designated by CFC’s “COCORO”, all provide similar functions and serve similar purposes, such as covering or keeping warm. Hence, TIPO determines that CFC’s “COCORO” is applied for use in similar goods.

 

Turning to the strength of the trademark, TIPO notes that there is little evidence submit by CFC to support its trademark use. In the meantime, there are lots of documents and TIPO’s prior determinations supporting the finding of well-known status of “COCO” trademarks. As a result, TIPO is convinced that consumers are more familiar with Chanel’s “COCO” trademarks.

 

In view of the similarity between “COCO” and “COCORO”, the similarity between the goods designated by “COCORO” and those designated by Chanel’s “COCO”, and the well-known status of COCO trademarks among the relevant consumers, TIPO opines that there is likelihood that consumers with ordinary degree of care would be confused by the registration of “COCORO”. Therefore, CFC’s “COCORO” is cancelled based on Article 30.1.10 of Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RENMbHBRVUdJd0V6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

*Article 30.1.10 of Trademark Act:

A mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

Taylor Guitars prevailed over MainPeakMusic Co. Ltd. in opposition proceeding over “baby” trademark

TAYLOR-LISTUG INC. (“Taylor”), the registrant of trademarks “BIG BABY” (No. 01076788) and “BABY TAYLOR” (No. 01076787), filed opposition against MainPeakMusic Co. Ltd. (“MPMC”) on January 14, 2020, alleging that MPMC’s registered “baby” word mark should be cancelled due to violation of Trademark Act.

 

MPMC’s “baby” trademark (No. 02016426, see below) was granted on October 16, 2019, designated for use in goods under class 15, including musical instruments such as keyboard instrument, electronic musical instrument, violins, guitars, electric guitars, ukuleles, guitar strings, recorder, tuner for musical instrument, music stand, and musical box.

 

Taiwan’s IP Office (“TIPO”) sided with Taylor, finding MPMC’s “baby” trademark violates Article 30.1.10 of Trademark Act:

1.     Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark; and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated; and hence there exists a likelihood of confusion on relevant consumers.

2.     In this case, Taylor’s trademarks, i.e., “BABY TAYLOR” and “BIG BABY”, and MPMC’s trademark, i.e., “baby”, all feature the same word “baby”, with minor difference in style and font size. While Taylor’s trademarks contain additional words “BIG” and “TAYLOR”, these words, from the viewpoint of ordinary consumers, would not make Taylor’s trademarks different from MPMC’s “baby” trademark. Rather, MPMC’s “baby” trademark may be considered as one of Taylor’s “BABY” trademark series. Thus, MPMC’s trademark is conceptually, verbally, and visually similar with Taylor’s trademarks.

3.     TIPO further notes that Taylor’s trademarks were also applied for use in similar musical instrument, like guitar. Thus, the goods designated by MPMC’s “baby” trademark are highly similar with that designated by Taylor’s trademarks.

4.     Moreover, since “BABY TAYLOR” and “BIG BABY” neither describe nor are related to the nature or function of the designated musical instrument, TIPO holds that they should be highly distinctive. In other words, consumers are inclined to use them to identify the source of the supplied goods or services.

5.     Turning to the reputation of trademark, TIPO finds this factor again tilts to the favor of Taylor. Since its inception in 1974, Taylor has been well-known for its high quality acoustic guitar. In 1996, Taylor further introduced the “Baby” series, touting that the “Baby” guitar series is the “ultimate travel companion”. After years of marketing and selling, Taylor’s “BABY TAYLOR” and “BIG BABY” have gained considerable reputation within the relevant consumers. To the contrary, there is no evidence of trademark use submitted by MPMC to back its use of “baby” trademark. Thus, TIPO is convinced that consumers are more familiar with Taylor’s “BABY TAYLOR” and “BIG BABY” trademarks.

 

Given that MPMC’s “baby” is highly similar with Taylor’s “BABY TAYLOR” and “BIG BABY”, is applied for use in similar musical instruments, and consumers are more familiar with Taylor’s trademarks, TIPO determines that MPMC’s “baby” is confusingly similar with Taylor’s “BABY TAYLOR” and “BIG BABY”, and thus should be cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dUVFbU0zZlpEcURLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Amazon’s Alexa prevailed in trademark opposition, cancelling another trademark that features similar icon of dialogue bubble adopted by Amazon’s popular app

 On August 31, 2021, Taiwan’s IP Office (“TIPO”) determined that the registration of trademark held by WanPay Digital Marketing Co., Ltd. (“WanPay”) should be cancelled, for WanPay’s trademark might cause confusion with the registered icon held by Amazon Technologies Inc. (“Amazon”) for its popular Alexa App (Reg. No. 01885349, see below).

WanPay’s trademark (Reg. No. 02035098, see below), was filed on July 19, 2019, and granted on January 16, 2020, designated for use in goods under class 9, including computer hardware, network server, mobile phone application, personal computer, internet equipment, computer game software, tablet computer, computer software, computer terminals, etc. Amazon filed opposition against WanPay’s trademark on April 16, 2020, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO found for Amazon, determining that WanPay’s trademark should be cancelled in accordance with Article 30.1.10 of Trademark Act, which provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers”.

 

1.      TIPO first recognizes that Amazon’s trademark is highly distinctive and unique, which would create strong impression among the relevant consumers. Because of such high distinctiveness and originality, ordinary consumers are more inclined to use it to identify the source of the supplied goods or services, and are more likely to be confused even though there is only minor degree of similarity.

2.      As to similarity, WanPay argues that the two trademarks should be dissimilar because Amazon’s trademark features a blue circular bubble without any further design, while WanPay’s trademark features two check marks right in the middle, which should be sufficient to distinguish its contested trademark from Amazon’s. Amazon argues that both trademarks present the image of a dialogue bubble, so they should be found visually and conceptually similar with each other. TIPO sides with Amazon, finding the two trademarks are similar despite the presence of two check marks in WanPay’s trademark, for the shape and contour of its trademark is almost the same as that of Amazon’s blue dialogue bubble, especially the protruding corner shown in the circular bubble.

3.      WanPay contends that the nature of goods designated by its trademark is dissimilar with those designated by Amazon’s. TIPO disagrees. Amazon’s cited trademark is designated for use in voice recognition software, voice control application, software for home device, computer software for personal data management, etc. The functions and purposes of these products, TIPO finds, are relevant and associated with those designated by WanPay’s opposed trademark. While WanPay argues that its business model (e-payment, virtual currency, etc.) is different from Amazon’s (voice recognition, digital personal assistant, etc.), TIPO finds such difference is less relevant in determining the similarity of the products designated by the trademarks.  

4.      Turning to the recognizability of trademark, TIPO again finds this factor tilts to Amazon’s favor, for Amazon’s trademark, through its continuous use in providing the highly successful service and product of Amazon Alexa, has been well recognized by the local consumers. To the contrary, the evidence of use submitted by WanPay is relatively thin. Hence, TIPO is of the view that Amazon’s trademark should be given more weight when evaluating the likelihood of confusion among the relevant public.

5.      Given the two trademarks are similar with each other, designated for use in relevant and associated products, Amazon’s trademark is highly distinctive and should be given more favorable light in view of its profound recognizability among the relevant customers, TIPO determines there might be confusion caused by WanPay’s trademark. Thus, WanPay’s trademark is found violating Article 30.1.10 of Trademark Act.     

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cmk1K3hTblczNUhidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled a registered trademark featuring a bird for likelihood of confusion with the bird icon adopted by Unilever’s popular brand “DOVE”

 On February 13, 2020, Unilever IP Holdings B.V. (“Unilever”), the registrant of trademarks for the popular personal care brand “DOVE” (Reg. No. 01028508, 01021583, see below), filed trademark opposition against Van Xuan FMCG Investment Company Limited (“Van Xuan”), alleging that Van Xuan’s registered trademark would cause confusion with Unilever’s iconic trademarks. 

Van Xuan’s trademark (Reg. No. 02021779, see below), was filed on March 18, 2019, and granted on November 16, 2019, designated for use in goods under class 3, including cosmetics, nail polish, fragrance, whitening cream, etc. 

Taiwan’s IP Office (“TIPO”) found for Unilever on August 10, 2021, determining that the registration of Van Xuan’s 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 a mark is “identical with or similar to another person’s registered trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected, and hence there exists a likelihood of confusion on the relevant consumers.”

2.     TIPO first finds the opposed trademark features a silhouette drawing of bird, which is similar to Unilever’s registered bird logo for its “DOVE” brand. While Van Xuan’s trademark provides more detailed description on the wings and claws of the bird, TIPO is of the view that such differences are minor, and could not help consumers with ordinary degree of care to distinguish Van Xuan’s trademark from Unilever’s. Therefore, Van Xuan’s trademark is found visually and conceptually similar with Unilever’s trademarks. The degree of similarity is high. 

3.     As to the designated use of goods, TIPO notes that Unilever’s trademarks are applied for use in goods like bath essence, shower gel, agents for shaving, body deodorant, hand soap, skin care, etc. These products, like those designated by Van Xuan’s opposed trademark, serve similar function for personal hygiene and personal care, and are usually sold through similar retail channels. As such, TIPO finds Van Xuan’s opposed trademark is applied for goods that are similar to those designated by Unilever’s trademarks. 

4.     TIPO further reasons that given Unilever’s trademarks are very distinctive, and have been put in use on various “DOVE” products like shower gel, shampoo, facial cleanser, etc., for a very long time, the relevant consumers are more familiar with Unilever’s iconic logos.

5.     In view of the above, considering the similarity between Van Xuan’s and Unilever’s trademarks, the similarity between the goods designated by Van Xuan’s trademark and those by Unilever’s “DOVE” logo, and the fact that local consumers are more familiar with Unilever’s iconic trademarks, TIPO posits that the registration of Van Xuan’s trademark may cause confusion among the relevant consumers. Therefore, Van Xuan’s registered trademark shall be cancelled accordingly.

 

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Q2hsRzgxd3BqS3RBeU9XM2QwVmwwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true