Victoria Beckham’s opposition against another registered “VB” trademark in Taiwan fell short

On March 31, 2018, Victoria Beckham (“Opposer”), the founder of her eponymous fashion brand “VB”, filed trademark opposition against Reg. No. 01888812, alleging that said registration violates Article 30.1.11 and Article 30.1.12 of Trademark Act.

 

The contested trademark, the No. 01888812 trademark (see below), was filed on July 19, 2017, and granted on January 1, 2018, designated for use in hair oil, lotion, toner, perfume, lipstick, nail polish, etc. The Opposer contended that the registration of the contested trademark would cause confusion with the Opposer’s well-known “VB” brand, and that the application of the contested trademark is based on intent to imitate the Opposer’s famous brand.

On December 29, 2021, Taiwan’s IP Office (“TIPO”) did not side with the Opposer, finding that:

1.     To prove violation of Article 30.1.11 of Trademark Act, the Opposer has to show that the alleged trademark has obtained well-known status before the filing date of the contested trademark. While there is evidence showing the use of Opposer’s brand “VB” on cosmetic products (such as “VB x Estee Lauder”) and in magazine’s news coverage (such as VOGUE, ELLE, etc.), the volume and duration of such use is insufficient to prove that prior to the filing date of the contested trademark, Opposer’s “VB” brand has been famous among the general public. 

2.     As to Opposer’s contention regarding violation of Article 30.1.12 of Trademark Act, there must be evidence showing that the application of the contested trademark is made based on intent to imitate the earlier used trademark. Here, TIPO agrees that the contested trademark is similar with the Opposer’s brand “VB” and is applied for use in similar cosmetic product. However, the registrant of the contested trademark argued that she has obtained another registered trademark “Vivian Beauty Spa” (Reg. No. 01718900) in 2015, and that she further registered the contested trademark because she considered “VB” as the combination of initials of “Vivian Beauty”. TIPO finds registrant’s aforesaid explanation reasonable, and thus did not find registrant’s filing of the contested trademark based on intent to imitate Opposer’s brand name.

 

In view of the above, the Opposer’s opposition is denied accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VmQweDNjMWJCY0RETXFVNktzdnJCdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

PayPal successfully challenged “PAYPAYCLOUD” in its trademark opposition before Taiwan’s IP Office

On March 16, 2020, PayPal Inc. (“PayPal”), the registrant of series “PayPal” and “PAYPAL” trademarks in Taiwan (Reg. No. 00191043, 00191961, 01257705, 01354987, 01766166, and 02046601, see below), filed opposition against Paypaycloud Fintech Co. Ltd. (“PFC”), alleging that the registration of PFC’s trademark would cause confusion with PayPal’s aforesaid famous trademarks.

The contested trademark, PFC’s No. 02030281 trademark (see below), was filed on March 15, 2019, and granted on December 16, 2019, designated for use in services under class 35, including department store, convenience store, establishing computer information database, management of computer files and database, maintenance and renewal of registered data, online shopping, etc.

On December 29, 2021, Taiwan’s IP Office (“TIPO”) found in PayPal’s favor, determining that PFC’s “PAYPAYCLOUD” trademark violates Article 30.1.11 of Trademark Law. The reasons held by TIPO are as follows:

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

2.      Based on the evidence submitted by PayPal, including the worldwide trademark registrations of “PayPal” and “PAYPAL”, the adoption of PayPal’s service in a wide range of local businesses, including the popular B2B online trading platform TaiwanTrade, and the relevant news reports, TIPO is convinced that PayPal’s cited trademarks are well-known in the area of third-party payment service.

3.      As to similarity, TIPO notes that “PAYPAYCLOUD” would be perceived as combination of “Pay”, “Pay”, and “Cloud”. Since “Cloud” carries the meaning of cloud service, it would be less distinctive when being used in service like computer database. Accordingly, “PAYPAY” would constitute the dominant portion of PFC’s contested trademark, and TIPO opines that no matter it is “PayPal” or “PAYPAL”, they are both similar with “PAYPAY”.

4.      In addition, TIPO finds that PFC’s contested trademark is applied for use in service that is similar with or relevant to the designated service of PayPal’s well-known trademarks, because the latter is used to facilitate the former, and both services are related to meeting consumer’s demands for processing online transaction and payment.  

5.      TIPO also finds that “PayPal” as a trademark is highly unique, since it is not a mere combination of common words. Further, TIPO notes that through PayPal’s continuous use and marketing, “PayPal” has achieved the status of well-known trademark and the consumers would be more familiar with PayPal’s trademark.

 

In view of the above, considering that “PAYPAYCLOUD” is similar with “PayPal”, that it is applied for use in similar services, that “PayPal” and “PAYPAL” are well-known, and that consumers are more familiar with PayPal’s famous trademarks, TIPO determines that registration of PFC’s contested trademark might cause confusion with PayPal’s well-known trademarks. Therefore, “PAYPAYCLOUD” is cancelled by TIPO in view of violation of Article 30.1.11 of Trademark Law.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VzlsZ3RpVWRvdyt4Um9yc1NaeW9BQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Conde Nast successfully challenged the trademark registration of “VOGUE BEAUTY” in Taiwan’s IP Office

Conde Nast ASIA/PACIFIC, INC. (“Conde Nast”), the registrant of trademarks no. 01307044 and 00949897 (see below), filed opposition against CHUNG WEI BIOMEDICAL CO., LTD. (“CWB”) on March 15, 2021, alleging that CWB’s trademark “VOGUE BEAUTY” should be cancelled for causing confusion with Conde Nast’s famous “VOGUE” trademarks.

 

The contested trademark, CWB’s “VOGUE BEAUTY”, was filed for registration on April 14, 2020, and granted December 16, 2020 (Reg. No. 02109293, see below), designated for use in rental service for e-book reader under class 41. Conde Nast contended that registration of “VOGUE BEAUTY” violates, among the others, Article 30.1.10 of Trademark Law, 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.

 Taiwan’s IP Office (“TIPO”) sided with Conde Nast on November 25, 2021, finding that registration of “VOUGE BEAUTY” should be cancelled for being confusingly similar with Conde Nast’s “VOGUE” trademarks:

 

1.    Similarity of Trademark:

TIPO finds CWB’s “VOGUE BEAUTY” similar with Conde Nast’s “VOGUE”. Although “VOGUE” and “BEAUTY” are common words with ordinary meanings, TIPO opines that when viewing “VOGUE BEAUTY”, consumers would not consider such combination of words creates unique meaning. Since both “VOGUE BEAUTY” and “VOGUE” share the same word “VOGUE”, CWB’s contested trademark is considered visually and verbally similar with Conde Nast’s “VOGUE”.

2.    Similarity of goods and services

TIPO notes that CWB’s “VOGUE BEAUTY” is designated for use in rental service for e-book reader, while Conde Nast’s “VOGUE” are designated for use in products like “electronic publication” and “books and magazines downloadable from internet”, which seem to be different from each other. However, in view of the trend of digitization of publications, the use of e-book will only become more and more popular. Under this context, TIPO finds that the products designated by Conde Nast’s “VOGUE” (i.e., electronic publication and downloadable books) may be provided through using the service designated by CWB’s “VOGUE BEAUTY” (i.e., rental service for e-book reader). To this respect, the designated products and service actually serve the same or relevant purpose for consumers. Thus, TIPO considers the services designated by CWB’s trademark somewhat associated with the products designated by Conde Nast’s “VOGUE”.

3.    Strength of the trademark:

TIPO further finds that based on the evidence of profound use of Conde Nast’s “VOGUE” trademark, including the successful and continuous publishing of the world-wide famous fashion magazine “VOGUE”, and the development of its associated cosmetic and beauty service, Conde Nast’s alleged trademarks have become famous among the relevant consumers.

 

In view of the above, considering that Conde Nast’s “VOGUE” is well-known, that CWB’s “VOGUE BEAUTY” is similar with Conde Nast’s “VOGUE”, that CWB’s “VOGUE” is applied for use in associated services, and that consumers are more familiar with Conde Nast’s famous “VOGUE” trademark, TIPO determines that registration of CWB’s “VOGUE BEAUTY” would cause confusion with Conde Nast’s famous “VOGUE” trademarks. As a result, TIPO rules that CWB’s “VOGUE BEAUTY” should be cancelled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjRRYmxtZWNQa2cwVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Taiwan’s IP Office found there would be no confusion between “MediaTek Turing” and “NVIDIA TURING”

On June 16, 2020, NVIDIA CORPORATION (“NVIDIA”), the registrant of trademark no. 02070494 (see below), filed opposition against MediaTek Inc. (“MediaTek”), alleging that the registration of MediaTek’s “MediaTek Turing” shall be cancelled due to violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

The challenged trademark, “MediaTek Turing” (Reg. No. 02049241, see below), was filed on October 3, 2019, and granted on March 16, 2020, designated for use in goods under class 9 (e.g., semiconductor, integrated circuits, chipset, printed circuit boards, computer programs, computer software, etc.) and services under class 42 (e.g., computer software design, integrated circuit design, software design for artificial intelligence, etc.).

On November 26, 2021, Taiwan’s IP Office (“TIPO”) sided with MediaTek, finding the registration of “MediaTek Turing” would not cause confusion with “NVIDIA TURING”:

1.    NVIDIA argued that both “MediaTek Turing” and “NVIDIA TURING” share the word “Turing/TURING”, so the degree of similarity between “MediaTek Turing” and “NVIDIA TURING” should be quite high. MediaTek countered that “TURING” in general would be perceived as the name of the well-known computer scientist Mr. Alan Mathison Turing, so the word “TURING” should not be distinctive if being used for the designated goods under class 9 and services under class 42, which are related to computer technology and design of algorithm.

2.    TIPO found for MediaTek, finding that the word “TURING” would not be distinctive when being used in the designated goods and services, and that consumers would find the initial words in both trademarks, namely, “NVIDIA” and “MediaTek”, more distinctive and appealing. In other words, consumers would view the trademarks in their entirety, which include “NVIDIA” and “MediaTek”, rather than focus only on “Turing” and “TURING”, to identify the source of the provided goods and services. Thus, TIPO posited that consumers would not find “MediaTek Turing” and “NVIDIA TURING” similar with each other.

3.    NVIDIA also argued that when MediaTek filed its application for “MediaTek Turing” on October 3, 2019, “NVIDIA TURING” has already been a famous trademark. To this end, TIPO noted that the evidence submitted by NVIDIA did show that “NVIDIA” as a trademark has been put in use and well-known among the relevant consumers. However, there is less evidence showing “NVIDIA TURING” has gained the same well-known status. More evidence, such as sales records showing the revenue of products bearing the trademark “NVIDIA TURING” and the corresponding market share of these products, is needed.

TIPO agreed that the designated products and services of “MediaTek Turing” are similar with those of “NVIDIA TURING”. Nonetheless, considering the facts that “MediaTek Turing” and “NVIDIA TURING” are both distinctive, that consumers would not find “MediaTek Turing” and “NVIDIA TURING” similar with each other, and that evidence is insufficient to prove “NVIDIA TURING” as a trademark has obtained well-known status when “MediaTek Turing” was filed for application, TIPO determined that the registration of “MediaTek Turing” would not cause confusion with “NVIDIA TURING”, and thus there is no violation of the cited Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VlBKdWh4MFpLM0gyZm1UbmdtaTBJUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Shiseido’s “COGNAC DIAMOND” is cancelled due to likelihood of confusion with the French town well-known for the classic brandy production

 On July 8, 2019, Shiseido Company, Ltd. (“Shiseido”) filed trademark application for “COGNAC DIAMOND”, which was applied for use in goods under class 3, including soap, fragrance, perfume, cosmetics, cleansing lotion, hair oil, hair conditioner, cream, lotion, cotton pad, essential oil, shampoo, conditioner, hair dye, toothpaste, etc. Shiseido’s aforesaid trademark was granted on December 16, 2019 (Reg. No. 02028451, see below)

On March 12, 2020, the Bureau National Interprofessionnel du Cognac (“BNIC”) and the Institut national de l'origine et de la qualité (INAO) filed opposition against Shiseido’s registered “COGNAC DIAMOND”, alleging that such registration violated Article 30.1.8 of Trademark Law.

Taiwan’s IP Office (“TIPO”) sided with BNIC and INAO on November 30, 2021, determining that “COGNAC DIAMOND” should be cancelled for such trademark might be misleading as to the quality or origin of its designated goods.

 

1.      Article 30.1.8 of Trademark Law provides that a mark shall not be registered if such a mark is “likely to mislead the public as to the nature, quality, or place of origin of the goods or services”.

2.      Based on the relevant French regulations, reports on Wikipedia, and the magazines that introduces French wine, TIPO agreed that before December 16, 2019, “Cognac” has been widely understood and recognized by the general public as the name of place where the classic brandy is made. In other words, ordinary consumers would know “Cognac” refers to a specific place in western France that is well-known for its brandy production.

3.      When examining Shiseido’s “COGNAC DIAMOND”, TIPO noted that in comparison with “COGNAC”, “DIAMOND” is a common and less distinctive word that consumer with ordinary care would not pay attention to. Thus, TIPO was of the view that “COGNAC” constitutes the main distinctive portion of Shiseido’s contested trademark.

4.      Considering the facts that “Cognac” is generally perceived as the name of the place in France that produces well-known brandy, and that “COGNAC” would be the distinctive portion of Shiseido’s contested trademark, TIPO concluded that consumers may mistakenly believe that the cosmetic products designated by Shiseido’s “COGNAC DIAMOND” are associated with or relevant to the aforesaid region of western France, and confuse the quality, origin, or nature of the designated products.

In view of the above, TIPO determined that Shiseido’s “COGNAC DIAMOND” should be cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3VSMDRpRFpFTVBkZS9FcHpMWjlvQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Taiwan’s IP Office considers the brand territory of “BENTLEY” is not limited to auto industry, and cancels an identical trademark that is applied for use on alcoholic products

On November 16, 2021, Taiwan’s IP Office (TIPO) decided to cancel a trademark, “BENTLEY”, registered by Aucera S.A. (“Aucera”), finding such trademark would cause confusion with the brand held by the worldwide famous car giant Bentley Motors Limited (“BML”).

BML’s trademark, “BENTLEY” (Reg. No. 00173595, see below), is registered in as early as 1981 in Taiwan, designated for use in goods such as auto parts, engine, automobile chassis, transmission gears, wheel brakes, etc.

 

Aucera’s contested trademark, which also uses the word “BENTLEY” (Reg. No. 02079373, see below), was filed on December 5, 2019, and granted on August 16, 2020, designated for use in various kinds of alcoholic beverages such as rice wine, red wine, white wine, liquor, brewed wine, ginseng wine, etc.

 

BML filed opposition against Aucera on November 16, 2020, contending registration of Aucera’s “BENTLEY” would cause confusion with BML’s famous trademark “BENTLEY”.

 

TIPO sided with BML based on the following reasons:

1.    Given the voluminous evidence supporting the long term and continuous use of BML’s “BENTLEY” trademark, including trademark registration records, marketing materials, news reports, establishment of service centers, and the sale records, TIPO is convinced that when Aucera filed application for “BENTLEY”, BML’s “BENTLEY” is already a famous trademark in the field of auto industry in Taiwan.

2.     It is also noted that Aucera uses exactly the same word “BENTLEY”. The degree of similarity between Aucera’s and BML’s trademarks are high. Moreover, “BENTLEY” is highly distinctive since it is not relevant to the nature or function of the products in which it is applied for use.  

3.     It is further noted that aside from auto industry, BML’s “BENTLEY” has been put in use for various kinds of products. For example, there is record showing BML uses “BENTLEY” in products such as watches, ties, glasses, and water bottle. In 2019, in celebration of the brand’s 100^th anniversary, BML also teamed up with Champagne Comtes de Dampierre, and delivered very popular Champagne gift box to the market. Indeed, the use of BML’s “BENTLEY” is not only continuous, but also highly diversified. Therefore, consumers are more familiar with BML’s “BENTLEY”.

4.     In view of the high degree of similarity with BML’s well-known “BENTLEY”, the facts that “BENTLEY” is distinctive, that consumers are more familiar with BML’s famous trademark, and that BML’s famous trademark has been used on various kinds of products, TIPO ruled that the registration of Aucera’s “BENTLEY”, though intended for use on alcoholic products, might still cause confusion with BML’s aforesaid well-known trademark. Hence, Aucera’s contested trademark is cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UkdaSG01TDlYQXBBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled trademark registered by musical store after finding its registration was based on intent to imitate the stage name of U2’s guitarist

On November 15, 2021, Taiwan’s IP Office (TIPO) cancelled a trademark registered by Top Music Co. Ltd. (Reg. No. 02024861, see below), finding that such trademark was too similar with the stage name of U2’s lead guitarist, “Edge”, and that such high degree of similarity was based on the intent to imitate the worldwide famous guitar player of the legendary rock band.

 

The contested trademark was filed on March 7, 2019, and granted on November 16, 2019, designated for use in goods under class 15 and 17, including musical instrument box, drum, drum sticks, electronic musical instrument, music synthesizer, musical instrument, music box, tuner for musical instruments, musical notation device, etc. The well-known rock guitarist filed opposition on February 14, 2020.

 

The key issue is whether the contested registration violates Article 30.1.12 of Trademark Law, which prescribes that a mark shall not be registered if such a mark:

1.      Is identical with or similar to another person’s earlier used trademark;

2.      Is to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied; and

3.      Is filed by the applicant with the intent to imitate the earlier used trademark based on applicant’s awareness 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.

 

The registrant of the contested trademark argues that there is no violation of Trademark Law, because “edge” is only a common word with ordinary meaning, and the contested trademark, which demonstrates additional stylization, is dissimilar with the stage name of U2’s lead guitarist. TIPO disagreed.

 

1.      First, based on the news reports, albums, and the sales records of guitar products featuring the famous U2 guitarist’s name “Edge”, TIPO is convinced that “Edge” as a trademark has been put in use on relevant musical merchandise before the filing date of the contested trademark.

2.      Second, while there is a stylized letter “E” presented in the contested trademark, TIPO finds the contested trademark still uses exactly the same word “edge”, which is visually, verbally, and conceptually similar with the stage name of the rock guitar player. Considering such high degree of similarity, together with the fact that both trademarks are used for musical products, TIPO opines that consumer with ordinary degree of care would find the contested trademark associated with the U2 lead guitarist.

3.      Although the registrant argues that “Edge” is simply a common word, so that registrant has no intent to imitate the name of the U2 guitar player, TIPO finds this argument unpersuasive. The word “Edge” is distinctive when being used in musical products. Added to that, the degree of similarity is too high. Since registrant runs a musical store, it is difficult for TIPO to believe that it would have no knowledge of the stage name of the lead guitarist of the worldwide famous rock band U2.

 

In view of the above, TIPO concludes that such high degree of similarity between the contested trademark and the stage name of the famous guitar player could only be explained by intent to imitate, rather that pure coincidence. Thus, the contested trademark was cancelled accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4eXZRYkZaVTA2ZCt6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true