Taiwan’s IP Office finds “鬼滅之刃” (“Demon Slayer”), the title of the popular Japanese manga, a well-known trademark

 On June 28, 2022, Taiwan’s IP Office (“TIPO”) found in favor of KABUSHIKI KAISHA SHUEISHA (“SHUEISHA”), finding that SHUEISHA’s trademark “鬼滅之刃” (“Demon Slayer”) a well-known trademark, and that trademark no. 02085753 should be cancelled in view of likelihood of confusion with SHUEISHA’s aforesaid famous trademark.

“鬼滅之刃”(‘’Demon Slayer”) is a highly popular and famous Japanese manga illustrated by Koyoharu Gotouge. It was published and serialized by SHUEISHA in February of 2016. The anime could be seen on multiple streaming platforms, including Netflix, and the movies “Mugen Train” released in 2020 has become the blockbuster in the same year. Both the manga and its anime adaptions achieved great success. In addition, SHUEISHA also developed various kinds of merchandise and derivatives around this phenomenal manga series, including stage show, TV show, and video games. In Taiwan, SHUEISHA already obtains trademark registration for its “鬼滅の刃” (For example, Registration No. 02110030, see below).

The contested trademark, which also features the same combination of Chinese letters “鬼滅之刃” (Registration No. 02085753, see below), was filed on March 9, 2020, and granted on September 16, 2020, designated for use in goods under class 28, such as fishing rods, fishing line, fishing gear, fishing reels, fishing hook, etc. SHUEISHA filed opposition on December 14, 2020, citing violations of Trademark Law. 

TIPO sided with SHUEISHA in its determination on June 22, 2020, based on the reasons below:

 

1.      Article 30.1.11 of Trademark Law 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 the said well-known trademark or mark.

2.      Based on the voluminous evidence submitted by SHUEISHA, including the sales records of the “Demon Slayer” manga, the box office records of the adapted movies, the news reports, and the “Demon Slayer” themed merchandise, TIPO was convinced that at the time when the application of the contested trademark was filed, SHUEISHA’s “鬼滅之刃” is not just the title of famous comic book, but has become a well-known trademark among the relevant consumers.

3.      The contested trademark and SHUEISHA’s well-known trademark are both comprised of the same Chinese letters “鬼滅之刃”, so it is clear that the contested trademark is highly similar with SHUEISHA’s well-known trademark.

4.      TIPO also notes that SHUEISHA’s well-known trademark is highly distinctive and has been put in use on diverse products, such as notebooks, backpack, cup, umbrellas, toys and figures, etc. SHUEISHA’s well-known trademark has built strong impression among the relevant consumers. On the other hand, TIPO finds the registrant of the contested trademark seemingly uses font and word style that are similar with SHUEISHA’s well-known trademark when presenting the contested trademark together with registrant’s fishing products on Shopee. It is hard to gainsay that the contested trademark was filed with intent to imitate SHUEISHA’s well-known trademark.  

5.      While the contested trademark is applied for use in different kinds of goods, TIPO specifically points out that in the manga, there is a famous character “Giyu Tomioka” (the Water Pillar) whose go-to move is “water breathing”. In this light, it is highly likely that tools and accessories related to water will be used or presented in the Demon Slayer themed merchandise or COSPLAY. Therefore, TIPO opines that product like fishing rod and fishing gear should still be goods that are associated with or related to SHUEISHA’s well-known trademark.

In view of the above, considering the well-known status of SHUEISHA’s “鬼滅之刃”, the high similarity of the contested trademark, the diversity of the Demon Slayer themed merchandise, and registrant’s bad faith, TIPO finds the registration of the contested trademark may still cause confusion with the SHUEISHA’s well-known trademark, even though the contested trademark is applied for use in fishing gears. As such, the contested trademark shall be cancelled due to violation of Article 30.1.11 of Trademark Law.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bTYvMU1iRzU4dGlPYWwvV2hEWktnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German Optical Equipment Manufacturer ZEISS Successfully Canceled Trademark “ZEISHI LOOK” Before Taiwan’s IP Office

On May 31, 2022, Taiwan’s IP Office (TIPO) rendered a determination in favor of CARL ZEISS AG (“ZEISS”), the German leading enterprise operating in the field of optics and optoelectronics, finding the trademark “ZEISHI LOOK” is similar with ZEISS’ registered trademark “ZEISS” (Reg. No. 00080541, see below), and thus shall be canceled accordingly.

 

The contested trademark “ZEISHI LOOK” (Reg. No. 02088869, see below) was filed on February 4, 2020, and granted on October 1, 2020, designated for use in goods under class 9, including sports protective glasses, glasses frames, sunglasses, contact lenses; glasses cases; glasses lenses, corrective lenses, optical corrective lenses, optical lenses, etc. ZEISS filed cancellation action on December 29, 2020, alleging the registration of “ZEISHI LOOK” violates, among the others, Article 30.1.10 of Trademark Law.

 

In its determination, TIPO sides with ZEISS based on the following:

1.    According to Article 30.1.10 of Trademark Law, a mark shall not be registered if such a mark is 1) 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.     As to similarity, although the contested trademark consists of two words: i.e., “ZEISHI” and “LOOK”, TIPO is of the view that “ZEISHI” constitutes the dominant portion, and would be used by the consumers to identify the source of service or goods. When comparing “ZEISHI” against “ZEISS”, TIPO finds they are visually and verbally similar to each other, as “ZEISHI” and “LOOK” share four identical letters.

3.     As to the designated use of goods, TIPO notes that both “ZEISHI LOOK” and “ZEISS” are applied for use in similar optical and eyewear products, such as glasses, glasses frames, lenses, etc. If similar trademarks are used, it is likely that consumers will be confused as to the source of these products.

4.      TIPO also finds “ZEISS” has reached the status of well-known trademark and consumers are more familiar with “ZEISS” after the continuous marketing and sale of the “ZEISS” branded products.

5.     In view of the similarity between the two trademarks, the facts that both trademarks are applied for use in similar eyewear products, that “ZEISS” is well-known, and that consumers are more familiar with “ZEISS”, TIPO is convinced that the registration of “ZEISHI LOOK” might cause confusion with “ZEISS” among the relevant consumers. Therefore, TIPO determines that the registration of “ZEISHI LOOK” should be canceled accordingly.      

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ejgza0RMRWp3Qll4VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Michael Kors scored a win for its “MK” trademark

 On April 29, 2022, Taiwan’s IP Office (“TIPO”) found in favor of MICHAEL KORS (SWITZERLAND) INTERNATIONAL GMBH (“Michael Kors”), determining that trademark no. 02140941 should be canceled in view of likelihood of confusion with Michael Kors’ trademark (Reg. No. 01770999, see below).

 

The challenged trademark (see below) was filed on September 21, 2020, and granted on May 16, 2021, designated for use in goods under class 18, including various kinds of bags, purses, wallets, handbags, tote bags, backpacks, school bags, briefcases, luggage, vanity cases, shopping bags, pet bags, pet backpacks, and umbrella. Michael Kors filed cancellation on August 13, 2021, contending among the others, that registration of the challenged trademark would cause confusion with Michael Kors’ “MK” logo.

TIPO sides with Michael Kors, finding that:

1.    The challenged trademark is composed of the letter “N” and “<”, and there is only little space in between. When seeing the challenged trademark, consumers would easily perceive it as “NK”, instead of “N<”. From this perspective, TIPO considers the challenged trademark is similar with Michael Kors’ cited “MK” trademark. However, in entirety, since there is additional characters “Michael Kors” presented in Michael Kors’ cited trademark, TIPO is of the view that the degree of similarity between the challenged trademark and the Michael Kors’ trademark is not high.

2.    As to the similarity of goods, TIPO notes that Michael Kors’ cited trademark is also designated for use in goods under Class 18, which includes handbag, purses, luggage, suitcase, briefcase, etc. Hence, TIPO determines that the challenged trademark is applied for use in products that are highly similar with Michael Kors’ trademark.

3.    TIPO agrees that Michael Kors’ “MK” logo is highly distinctive, and has become a very popular brand in Taiwan. Currently, Michael Kors has 15 stores, and has been very active in promoting and marketing its products. As such, TIPO finds consumers are more familiar with Michael Kors’ “MK”.

4.    In view of the above, although the similarity between Michael Kors’ “MK” trademark and the challenged trademark is not high, considering: 1) the high similarity of the products designated for use by the challenged and cited trademark, 2) the fact that Michael Kors’ cited trademark is more famous; and 3) that consumers are more familiar with Michael Kors’ “MK” logo, TIPO rules that registration of the challenged trademark may cause confusion among the relevant consumers. As a result, the registration of the challenged trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZC9zTkZvVjlrSXJnM1k3cXRXSG5qQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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