Taiwan’s Intellectual Property and Commercial Court sided with Safe Skies LLC, finding “TSA LOCK” registered by Travel Sentry Inc. shall be revoked for being a generic term

On May 11, 2022, Taiwan’s Intellectual Property and Commercial Court (“TIPC”) vacated the determination of Taiwan’s IP Office, and ruled in Safe Skies LLC’s favor by finding the trademark “TSA LOCK” registered by Travel Sentry Inc. shall be revoked because it has become a generic term for goods such as luggage, suitcases or backpacks.

 

Factual Background:

On September 2, 2005, Travel Sentry Inc. (“TSI”) filed trademark application for its “TSA LOCK”, which was designated for use in goods under class 6 (metal locks for luggage), class 18 (backpacks, sports carry bags, carry-on bags, travel bags, beach bags, briefcases, handbags, suitcases, trunks, luggage, fanny packs and wallets), class 20 (non-metallic locks for luggage), and class 22 (luggage straps). TSI’s application for “TSA LOCK” was subsequently granted as trademark no. 1227603 (see below).

Prior Proceeding:

On September 28, 2018, Safe Skies LLC (SSL) filed revocation action against TSI, alleging “TSA LOCK” shall be revoked for being a generic term in the trade. Taiwan’s IP Office (TIPO) partially granted SSL’s request, finding registration of “TSA LOCK” shall be revoked for class 6 and 20, but denying SSL’s revocation request for class 18 and class 22. After the Petitions and Appeals Committee rejected its appeal on November 18, 2020, SSL decided to appeal to TIPC for further review.

 

Issue:

Per TIPC, the issue to be reviewed is whether TSI’s “TSA LOCK” is a generic term, which shall be revoked per Article 63.1.4 of Trademark Law.

 

Court’s reasoning:

1.   The TIPC begins by looking into the applicable law, which provides that “The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following…..(4) where a trademark has become the generic mark or term, or common shape for the designated goods or services” (see Article 63.1.4 of Trademark Law).

2.   The legislative purpose is to safeguard the public interest such as market competition when a trademark, due to lack of due diligence or improper use by its registrant, has lost its distinctiveness and become a generic term that is commonly used in the trade. The burden is on the movant party to show that most of the relevant consumers would no longer consider such a trademark as an indicator of source of goods or services, but as a generic term that is commonly used by the relevant businesses

3.   Turning to the trademark at issue, here, the Court notes that “TSA” is the abbreviation of Transportation Security Administration, a US organization that has authority over the security of transportation system, including unlocking and inspecting passengers’ suitcases. The Court also notes that based on news reports such as USA Today and Linuxpilot, TSA lock refers to a specific lock that TSA could smoothly unlock, and that passengers who use such type of lock on their suitcases are less likely to suffer damages caused by TSA’s inspection (because TSA need not open by force). Accordingly, ordinary consumers, upon seeing TSI’s trademark “TSA LOCK”, would consider such a mark refers to a specific type or name of lock, rather than the source of products provided by TSI.

4.   The Court further strengthens its finding by referring to the webpages submitted by SSL, which show lots of suitcase or luggage products use “TSA lock” to manifest that they are equipped with TSA lock. Thus, the Court is convinced that TSA lock has become a generic term due to commonly used by the relevant businesses. Most consumers, upon seeing TSA lock used by relevant vendors, would understand that it means their products use TSA lock, which is a type of lock, rather than TSI’s registered trademark.

5.      Although TSI argues that “TSA” does not necessarily mean “Transportation Security Administration”, and raised other organizations’ names as rebuttal evidence, the Court finds such argument unpersuasive. It is because in TSI’s own supporting document, TSI specifically mentions that “For usage in USA the TSA LOCK^TM brand name must be replaced with ‘Travel Sentry^R Approved Locks’”. The Court believes that it proves TSI knows TSA refers to Transportation Security Administration, so it avoids using TSA to prevent confusion.

6.   In view of the above, the TIPC determines that TIPO was erroneous in not finding “TSA LOCK” a generic term for products under class 18 and 22. The original findings made by TIPO is vacated, and TSI’s trademark registration for “TSA LOCK” is revoked by TIPC accordingly.

 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,110%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c2%2c20220511%2c2

Taiwan’s IP Office confirms the bottle of Chanel’s N°5 is well-known

On April 29, 2022, Taiwan’s IP Office (“TIPO”) cancelled trademark no. 02091039, finding the bottle icon presented in the contested trademark would cause confusion with bottle of Chanel’s worldwide famous N°5 perfume. 

In its determination, TIPO finds that based on the voluminous evidence of use and marketing materials, not only the N°5 perfume itself, but also the bottle for the popular perfume brand, has achieved the status of well-known trademark. For example, the evening bag featuring the appearance and shape of N°5 bottle introduced by Chanel in 2014 was a huge success, and has remained popular nowadays. Chanel also registered its N°5 bottle as trademarks in Taiwan (Reg. No. 01629318 and 00010123, see below).

On the other hand, the contested trademark, no. 02091039, was filed for application on March 18, 2020, and granted on October 1, 2020. The contested trademark was applied for use in services under class 41, including various kinds of training, counseling, tutoring, and educational services. Chanel filed opposition on December 31, 2020, alleging the registration of the contested trademark violates, among the others, Article 30.1.11 of Trademark Law. 

TIPO opines that the bottle icon presented at the center of the contested trademark is highly similar with Chanel’s famous trademarks. Although there are two overlapping pentagons presented in the contested trademark, such elements are insufficient to create any difference. The bottle icon is still the dominant portion of the contested trademark. Thus, TIPO finds the contested trademark, as a whole, is highly similar with Chanel’s aforesaid well-known trademarks.

While the contested trademark is designated for use in educational service, which is different from the perfume products designated by Chanel’s trademarks, TIPO notes that Chanel’s N°5 products are quite diversified, and that there is evidence showing the registrant of the contested trademark is providing training and educational service related to fragrance and essence. Thus, it is still likely that consumers may be misled into believing that the contested trademark is related to or associated with Chanel’s well-known N°5 perfume brand.

In view of the above, the contested trademark is cancelled by TIPO accordingly.

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZC9zTkZvVjlrSXFZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

 

Foodpanda successfully challenged another “foodpanda” trademark in opposition proceeding by exerting its well-known status in food delivery service

On March 31, 2022, Foodpanda, one of the leading food delivery platforms in Taiwan, successfully canceled trademark registration No. 02103953 (the ‘953 trademark) for such a mark may cause confusion with its highly popular brand name.

 

The contested trademark, ‘953 trademark (see below), was filed for registration on May 7, 2020, and granted on December 1, 2020, designated for use in goods under class 9, including headphones, audio speakers, driving video recorders, microphones, video recording appliances, wireless headphones, hand-free device, etc. Foodpanda filed opposition against ‘953 trademark on February 25, 2021, alleging registration of ‘953 trademark violated, among the others, Article 30.1.11 of Trademark Act.

Taiwan’s IP Office (“TIPO”) sided with Foodpanda on March 31, 2022, finding the registration of ‘953 trademark would cause confusion with the famous brand name of the food delivery service:

 

1.    Per Article 30.1.11, a mark shall not be registered if such a mark 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 Foodpanda, including the news reports, marketing documents, records of exposure on social media platforms, and audio-visual advertising materials, TIPO is convinced that prior to May 7, 2020, “Foodpanda” has become famous and well-known among the public for food delivery service in Taiwan.

3.    As to similarity, it is clear that the contested ‘953 trademark is identical with the famous “Foodpanda” brand name, because both feature the same words.

4.    Since the famous brand name “Foodpanda” demonstrates a unique combination of two unrelated word “food” and “panda”, TIPO is of the view that “Foodpanda” as a brand name is highly distinctive. Besides, TIPO notes that consumers are more familiar with such brand name after Foodpanda’s continuous and successful marketing and promoting.

5.    Although the contested ‘953 trademark is applied for use in goods like headphones, microphones, driving video recorders, etc., TIPO considers these products are devices and tools that are commonly used by Foodpanda’s deliverymen when providing their delivery services. TIPO thus holds the view that the products which ‘953 trademark is applied for use are related to or associated with the service provided by Foodpanda.

6.    In view of the above, given that Foodpanda as a brand name is already famous and more well-known prior to the filing date of ‘953 trademark, that the contested ‘953 trademark is identical with Foodpanda’s brand name, and that the ‘953 trademark is designated for use in goods that are associated with or relevant to the food delivery service, TIPO determines that the registration of ‘953 trademark may cause confusion with Foodpanda’s famous brand name. Therefore, the registration of ‘953 trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZVJ0cUpFNEIrTnhWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled a trademark in view of its similarity with the famous “Apple Logo”

 Apple, the owner of the iconic “Apple Logo” (see below), filed opposition on February 17, 2021, alleging that the registration of no. 02101465 would cause confusion with its famous “Apple Logo”, which violates Article 30.1.11 of Trademark Act. 

On March 24, 2022, Taiwan’s IP Office (“TIPO”) sided with Apple, finding the registration of the contested trademark should be canceled:

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

2. The contested trademark “GC and device” (see below) was filed for application on June 15, 2020, and granted on November 16, 2020, designated for use in goods under class 31, including radish, carrot, pet treats, mushroom, fragrance sand for pet’s defecation, etc. 

3. TIPO noted that while there are characters “G” and “C” placed in the middle of a red apple, the shape and contour of the apple presented in the contested trademark are very similar with those of Apple’s famous logo. Apparently, there is a bite at the right side of the apple. Thus, ordinary consumers would find the apple presented in the contested trademark is very similar with Apple’s famous logo.  

4. TIPO also noted that Apple’s logo has achieved worldwide recognition and obtained well-known status based on its highly successful products and continuous use of “Apple Logo”. In other similar cases, TIPO also determined that the “Apple Logo” has become well-known in Taiwan. There is no doubt that the degree of popularity and recognizability of the “Apple Logo” is high among the general public.

5. In addition, upon further review, TIPO found that almost all of registered trademarks which presented an apple with a bite at its right side are owned by Apple. In other words, it is not that common for one to use a bitten apple as trademark. Hence, even though the contested trademark is applied for use in goods that is not that relevant to Apple’s products or service, it is still likely that the unique distinctiveness of “Apple Logo” would be diluted due to registration of the contested trademark.   

6. Given that the Apple Logo is well-known and highly distinctive, that the contested trademark is highly similar with the Apple Logo, and that it is likely that the distinctiveness of “Apple Logo” would be diluted due to registration of the contested trademark, TIPO determines that the contested trademark violates Article 30.1.11 of Trademark Act. The registration of the contested trademark is  canceled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RmlLbGt3SStqQUczdW93Vms0WXBWUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Taiwan’s Intellectual Property and Commerce Court found dining utensils not protectable as artistic work

In a decision rendered on March 17, 2022, Taiwan’s Intellectual Property and Commerce Court (“IPC Court”) determines that Appellant’s alleged design of dining utensils do not constitute protectable artistic work under Copyright Act, and rejects Appellant’s copyright claim accordingly.

According to Copyright Act, for a work to be eligible for protection as artistic work, such work must be original, namely, the work demonstrates aesthetic appeal through artistic skills, such as sketching, painting, sculpturing, etc. 

Here, the Appellant argued that the dining utensils it created should be  copyrightable as artistic work, alleging that the shape and curve of the outer appearance of the tableware demonstrate aesthetic feature. The IPC Court disagreed. 

While noting the edge of Appellant’s plate demonstrates a triangular curve, the IPC Court still considers the overall shape and design of the plate are functional, which aim to hold or contain the meal or soup, and have not demonstrated unique or decorative aesthetic characteristic (see below).

Although there is a rabbit icon featured on the top of Appellant’s plate (see below, right), testimony from witness already showed that such icon is a pure reference to a popular cartoon figure, without any further originality contributed by the Appellant. As a result, the IPC Court is of the view that the plate, the fork, the spoon, etc., are only useful articles without showing aesthetic feature via sufficient artistic skills. The shapes and structures of these articles are all closely related to their utilitarian aspects as dining tools. The Appellant’s tableware products should not be copyrightable as artistic work.

The Appellant further argued that the alleged tableware is an award-winning product, which should be sufficient to prove its originality and should support a finding of eligibility for copyright protection. The IPC Court, however, opines that the fact that the tableware product ever won Red Dot Design Award has no bearing with whether the outer design of said product is copyrightable. Considering that products like forks, spoons, and plates are dining tools and their structures and shapes are not separable from the functions they serve, and that there is no noticeable difference between Appellant’s tableware products and other ordinary dining tools, the IPC Court finds Appellant fails to meet the burden of proving originality. 

Based on the above, the IPC Court rules that although there is similarity between the Appellant’s tableware and Appellee’s product, there is no infringement of a valid copyright. 

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,110%2c%e6%b0%91%e8%91%97%e4%b8%8a%e6%98%93%2c6%2c20220317%2c1  

Taiwan’s IP Office cancelled trademark featuring bat silhouette in view of opposition filed by DC Comics

On February 23, 2022, Taiwan’s IP Office (“TIPO”) sided with DC Comics in its opposition against trademark no. 02100701, finding the contested trademark is filed out of registrant’s intent to imitate DC Comics’ famous bat emblem (see below).

 

The contested trademark (see below) was filed on June 17, 2020, and granted on November 16, 2020, designated for use in goods under class 18, such as backpack, shoe bag, suitcase, shopping bag, trekking poles, umbrellas, etc. 

DC Comics filed opposition on February 17, 2021, contending the registration of the contested trademark violated Article 30.1.12 of Trademark Law, which provides that a mark shall not be registered if such a mark is:1) being identical with or similar to another person’s earlier used trademark, and 2) to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, 3) 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.

 

Here, TIPO finds for DC Comics based on the following reasons:

1.    Based on evidence submitted by DC Comics, it is clear and undisputed that DC Comics’ Bat Emblem has been put in used on various kinds of products since as early as 1997, including, among the others, clothing, hats, backpacks, shoes, and umbrellas that feature the well-known Bat Emblem. Thus, there is no doubt that DC Comics’ Bat Emblem is an earlier used trademark.

2.    TIPO also notes that both trademarks feature bat silhouettes, which constitute the dominant portion of the trademarks. In addition, TIPO considers the overall contour and the style of the bat silhouette presented in the contested trademark are highly similar with those presented in DC Comics’ Bat Emblem. In other words, the contested trademark is visually and conceptually similar with DC Comics’ Bat Emblem. 

3.    Further, TIPO is aware that the contested trademark is applied for use in goods that is similar with or relevant to products in which DC Comics’ Bat Emblem is applied for use. It is likely that consumers would perceive products bearing the contested trademark to be associated with product supplied by DC Comics.

4.    Considering the facts that DC Comics has put its Bat Emblem in use for a very long time, and that the Bat Emblem is distinctive and has become well-known among the relevant consumers and fans, TIPO is of the view that it is unlikely that the registrant would file application for such a highly similar trademark out of pure coincidence. As such, TIPO determines that the total circumstances justify a finding of registrant’s intent to imitate DC Comics’ Bat Emblem, and that the contested trademark should be cancelled in view of Article 30.1.12 of Trademark Law.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SVhrTWdLcGlIQlhReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“KOKOHOM” found confusingly similar with Chanel’s famous “COCO” trademark

On January 28, 2022, Taiwan’s IP Office (“TIPO”) cancelled “KOKOHOM” over Chanel’s opposition, finding the registration of “KOKOHOM” trademark would cause confusion with Chanel’s well-known trademarks “COCO” (Reg. No 624792, 670814, and 859991, see below).

The application of the contested trademark, “KOKOHOM” (Reg. N0. 02147746, see below), was filed on January 20, 2021, and granted on June 16, 2021, designated for use in goods under Class 25, including, among the others, underwear, skirt, casual wear, pants, pajamas, etc. Chanel filed opposition on September 14, 2021, arguing the registration of “KOKOHOM” would violate Article 30.1.10 of Trademark Law. 

 

In its determination, TIPO found in Chanel’s favor, reasoning that:

1.    Firstly, “KOKOHOM” is verbally similar with “COCO”. While there is additional word “HOM” presented, TIPO considers “HOM” would be perceived as “HOME”, which carries the meaning of ‘HOME Page“. As such, consumers are inclined to perceive “HOM” as descriptive, and “KOKO” would constitute the dominant part of the contested trademark. In this light, TIPO opines there is medium degree of similarity between “KOKOHOM” and “COCO”.

2.    Turning to the similarity of the designated goods, TIPO notes that “KOKOHOM” is applied for use in apparels, which are similar with the products that Chanel’s cited trademarks are designated for use. For example, Chanel’s “COCO” is also applied for use in clothings, sweater, pants, gloves, etc., which serve similar or associated function. Thus, TIPO determines that “KOKOHOM” is applied for use in products that are similar with those designated by Chanel’s “COCO”. 

3.    Furthermore, TIPO recognizes that Chanel’s “COCO” is distinctive and has become well-known among the relevant consumers. In comparison with the voluminous records of trademark use submitted by Chanel, there is little evidence submitted to support the recognizability of “KOKOHOM”. Thus, TIPO considers “COCO” is more distinctive and the relevant consumers are more familiar with “COCO.”

4.    In light of the above, since consumers are more familiar with “COCO”, there is medium degree of similarity between “KOKOHOM” and “COCO”, and both “KOKOHOM” and “COCO” are applied for use in similar products, it is likely that consumers may be misled into believing that products bearing “KOKOHOM” and “COCO” are from the same source. Hence, TIPO determines that the registration of “KOKOHOM” might cause confusion with “COCO”, and should be cancelled accordingly.

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjlxN2RzTUo3d2kzdW93Vms0WXBWUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true