GIORGIO ARMANI successful in reversing the unfavorable determination made by Taiwan’s IP office as to its “AJ” trademark

On August 3, 2022, the Petition and Appeal Committee of Ministry of Economic Affair (“Appeal Committee”) entered decision in favor of GIORGIO ARMANI, finding there might be confusion with its “AJ” trademarks (Reg. No. 01766270 and 01768516, see below) due to registration of QMI INDUSTRIAL CO., LTD.’s (“QMI”) contested trademark.

 

QMI’s contested trademark, no. 02124952 (see below), was filed on September 17, 2020 and granted on March 1, 2021, designated for use in goods under class 25, such as suits, skirts, shorts, coats, capes, trousers, T-shirts, headbands, headscarves, neck scarves, hats, dress gloves, etc. GIORGIO ARMANI filed opposition on June 1, 2021, citing violation of Article 30.1.10 of Trademark Act. 

Taiwan’s IP Office (“TIPO”) denied GIORGIO ARMANI’s opposition, finding there is only low degree of similarity between QMI’s and GIORGIO ARMANI’s trademarks. GIORGIO ARMANI challenged TIPO’s finding in Appeal Committee.

In its determination, the Appeal Committee sides with GIORGIO ARMANI and holds the view that although there are other decorative elements presented in QMI’s contested trademark, such features are drawings and would be less likely to be distinctive from the perspective of ordinary consumers. As a result, consumers would still view “AJ” as the dominant portion of QMI’s trademark. Similarly, while there are additional artistic elements like arrows and icon of eagle embedded in GIORGIO ARMANI’s cited trademarks, the letters “AJ” still constitute the dominant portion and would be used by consumers to identify the source of the goods and services. Thus, the Appeal Committee opines QMI’s contested trademark is similar with GIORGIO ARMANI’s cited trademarks. TIPO’s determination finding there is merely low degree of similarity is erroneous.

Given that there is considerable similarity between QMI’s contested trademark and GIORGIO ARMANI’s cited trademarks, that both QMI’s and GIORGIO ARMANI’s trademarks are applied for use in similar apparel and clothing products, and that GIORGIO ARMANI’s trademarks are distinctive, the Appeal Committee vacated TIPO’s decision and remanded the case back to TIPO.

 

Source:

Appeal Committee’s determination:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20221015_decisionDownload-A211103002_180000_685_AftcmlvBvW/

TIPO’s determination:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4S2puaE1mS1IrbEFJdkZvZWMzaWdrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled trademark “CSI TAIWAN CRIME SCENE INVESTIGATION” over likelihood of confusion with the popular “CSI” TV drama

“CSI: CRIME SCENE INVESTIGATION”, sometimes referred to as “CSI”, is a popular American crime TV drama that was aired on CBS network in September of 2000, and has gained worldwide popularity since then. In Taiwan, the TV series is not only phenomenal, its title “CSI: CRIME SCENE INVESTIGATION” was also registered as trademark by DALTREY FUNDING LP (“Daltrey”), a CBS’s affiliate, in as early as 2004, and Daltrey has acquired series of trademark registrations for “CSI” over the years (Reg. No. 01091769, 02030444, and 02048892, see below, together referred to as “CSI”). 

The contested trademark, “CSI TAIWAN CRIME SCENE INVESTIGATION” (Reg. No. 02052756, see below), was filed on January 25, 2018, and granted on April 16, 2020, designated for use in goods under class 9, including devices like computer hardware, computer software, laboratory instruments, magnifying glasses, microscopes, telescopes, imaging and sound transmission equipment, spectrometers, chemical devices, chemical instruments, physical devices, physical instruments , observation instrument, etc. Daltrey filed opposition on July 16, 2020, citing violation of Article 30.1.11 of Trademark Law.

 

After reviewing Daltrey’s opposition and the responses of owner of the contested trademark, Taiwan’s IP Office (“TIPO”) sided with Daltrey on August 31, 2022, finding registration of the contested trademark would cause confusion with the famous CSI trademarks:

 

1)      Article 30.1.11 of Trademark Law provides that a trademark 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)      As to CSI’s status as being well-known, TIPO finds for Daltrey, considering the cited CSI trademarks have become well-known after continuous and profound marketing and promotion of the TV series, including the broadcasting on TV channel (AXN), the streaming via platform such as Netflix, and the mass media exposure over the years.

3)      TIPO also notes that both the contested trademark and the cited CSI trademarks present “CSI” and “Crime Scene Investigation”, which makes the contested trademark conceptually and visually similar with Daltrey’s famous trademarks.

4)      Although “Crime Scene Investigation” is descriptive, “CSI” is a combination of the initials of “Crime Scene Investigation”, and thus demonstrates considerable distinctiveness. Such unique combination of initials, when being used in products and services like DVD or drama production, could be distinctive.

5)      In addition to TV drama, the cited CSI trademarks have been used in diverse merchandise, such as books, games, etc. There is no doubt that consumers would be more familiar with Daltrey’s CSI trademarks than the contested trademark. Further, one popular theme of the successful TV series has been forensic investigation, which needs to use various kinds of observation instruments and lab tools. The use of these devices in the “CSI” TV series has formed strong impression among the consumers. When using the contested trademark on these devices, it is likely that consumers may be confused and misunderstand the origin or relationship of the services or products represented by these two trademarks.

 

In view of the well-known status of “CSI” trademarks, the similarity between the contested trademark and the cited CSI trademarks, consumer’s high familiarity with the CSI trademarks, and the fact that the contested trademark is used in related products, TIPO determines that the registration of the contested trademark may cause confusion with Daltrey’s famous “CSI” trademark. As such, the registration of “CSI TAIWAN CRIME SCENE INVESTIGATION” is canceled accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUwzcXpWMkRTZi9iZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office finds no confusion between “KAIKAI” and “KOOKAI”

On June 18, 2021, KOOKAI ENTERPRISES UK LIMITED (“KOOKAI”) filed opposition against trademark “KAIKAI”, contending that the registration of “KAIKAI” would cause confusion with its famous “KOOKAI” brand (Reg. No. 00440618 and 00658854, see below).

The contested trademark, “KAIKAI” (Reg. No. 02127787, see below), was filed on September 21, 2020, and granted on March 16, 2021, designated for use in goods under class 25, including T-shirts, sweaters, coats, shoes, underwear, scarves, socks, gloves, etc.

 KOOKAI argues that registration of “KAIKAI” violates Article 30.1.10 and 30.1.11 of Trademark Act, which provides that a mark should 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” (Article 30.1.10); or 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” (Article 30.1.11).

 

In its determination on August 15, 2022, TIPO sided with “KAIKAI”, finding “KAIKAI” not confusingly similar with the famous “KOOKAI” trademark:

 

1.      TIPO affirms that “KOOKAI” is a well-known trademark in the field of clothing after being continuously used and marketed for more than 38 years across multiple countries. It is undeniable that at the time “KAIKAI” was filed for trademark application, “KOOKAI” has achieved the status of well-known trademark in the field of clothing.

2.      As to similarity, TIPO finds the first three letters presented in “KOOKAI” and “KAIKAI” are different, which renders “KAIKAI” visually and verbally different from “KOOKAI”. In its entirety, TIPO holds the view that the similarity between “KOOKAI” and “KAIKAI” is low.

3.      As to similarity of use of products, TIPO notes that both “KOOKAI” and “KAIKAI” are applied for use in clothing and footwears, so they are used in related or associated products that serve similar function or purpose.

4.      TIPO further notes that both “KOOKAI” and “KAIKAI” have no specific meaning, so they are both distinctive when being designated for use in apparel and footwear products.

5.      For KOOKAI’s contention based on Article 30.1.11, TIPO opines that although “KOOKAI” is well-known, its low degree of similarity with “KAIKAI” and the fact that both “KOOKAI” and “KAIKAI” possess considerable distinctiveness make “KAIKAI” less likely to cause damages to distinctiveness or reputation of “KOOKAI”.

6.      For KOOKAI’s contention based on Article 30.1.10, TIPO again does not side with KOOKAI, finding the dissimilarity between “KAIKAI” and “KOOKAI” and the fact that both “KAIKAI” and “KOOKAI” are distinctive render “KAIKAI” distinguishable from “KOOKAI” among the ordinary consumers. Thus, there should be no confusion caused by registration of “KAIKAI”.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z044ZnRnbkNLZjNidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Red Bull prevails in trademark opposition proceeding over “Wild Ox” in Taiwan’s IP Office

On July 19, 2022, Taiwan’s IP Office (“TIPO”) determines that registration of “Wild Ox” should be cancelled in view of likelihood of confusion with Red Bull AG’s ("Red Bull") famous trademarks (Reg. No. 02018336, 01911042, and 01760536, See below).

The contested trademark, “Wild Ox” (Reg. No. 02117943, see below), was filed on August 18, 2020, and registered on February 1, 2021, designated for use in goods in class 5, including products like medicinal wine, refreshing agent, nutritional supplement, therapeutic drinks, medical tea, vitamin supplement, protein supplement, etc. Red Bull filed opposition against “Wild Ox” on April 21, 2021, alleging, among the others, violation of Article 30.1.10 of Trademark Act.

TIPO sides with Red Bull, finding that:

1.    Article 30.1.10 of Trademark Act provides that 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.    TIPO notes that in terms of similarity, both “Wild Ox” and Red Bull’s above cited trademarks feature two standoff bulls with rising tails, which render the trademarks, in their entirety, conceptually and visually similar with each other.

3.    As to the similarity of goods and services, TIPO finds Red Bull’s above cited trademarks are applied for use in products including various kinds of nutritional supplement and drinks, such as refreshing drinks, chicken essence, herbal tea, etc. TIPO thus opines products in which Red Bull’s trademarks are applied for use are associated with or related to products designated by “Wild Ox”. They serve similar functions, and meet similar needs from customers.

4.    With regard to distinctiveness of the trademark, based on the volume of use of trademark, TIPO posits Red Bull’s trademarks have gained strong familiarity and recognizability among the relevant consumers through its continuous and profound marketing, sponsorship, and sale of energy drink products. Plus, Red Bull’s brand has been used in diverse merchandise including toy figures, telescopes, watches, etc. Therefore, consumers are more familiar with Red Bull’s aforesaid trademarks.

Considering the similarity between “Wild Ox” and Red Bull’s trademarks, the fact that both trademarks are applied for use in associated goods with overlapping customer base, and that consumers are more familiar with Red Bull’s above trademarks, TIPO concludes that registration of “Wild Ox” is likely to cause confusion with Red Bull’s trademarks. As a result, the registration of “Wild Ox” is cancelled accordingly.       

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SEVVemhWaEJGeFNadWx2aklxK0NhQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Cocoella” was cancelled due to similarity with Coca-Cola’s famous mark

On July 28, 2022, Taiwan’s IP Office (“TIPO”) ruled in favor of The Coca-Cola Company, finding that the registration of trademark no. 02097396 may cause confusion with the beverage giant’s famous trademark “Coca-Cola” (Reg. No. 00425275, see below). 

The application of the contested trademark (see below) was filed on March 17, 2020, and was granted on November 1, 2020. The contested trademark was applied for use in goods in class 24, mainly including blankets, sheets, bed covers, mattress, quilts, towels, etc. Coco-Cola filed opposition on January 29, 2021, citing violations of Article 30.1.10 and 30.1.11 of Trademark Law.

In its determination, TIPO sided with Coca-Cola, finding “Cocoella” is confusingly similar with “Coco-Cola”: 

1.    First, TIPO notes that Coca-Cola’s cited trademark is designated for use in products including cotton, silk, and wool blankets, which are also used for covering while one sleeps. The nature, function, and purpose of these products are similar with those of goods in which the contested trademark is applied for use. Hence, “Cocoella” and “Coca-Cola” are designated for use in similar goods.

2.    As to the similarity between “Cocoella” and “Coca-Cola”, TIPO is of the view that while there are additional decorative elements, such as the crown and stars, presented in the contested trademark, the letters still constitute the dominant portion of the trademark. When comparing “Cocoella” against “Coca-Cola” as a whole, there is only slight difference in the word style and font size. Plus, the products in which the two trademarks are applied for use are not high-priced products, which normally would attract consumers’ high level of attention. When consumers’ level of attention is not high, TIPO opines they may not be able to discern such slight difference between “Cocoella” and “Coca-Cola”. Thus, “Cocoella” should be similar with “Coca-Cola”.

3.    When evaluating the strength of the trademark, TIPO finds “Coca-Cola” is not only famous in the field of carbonated drinks, but also has been put in use on diverse merchandise, including pillow, umbrella, socks, hats, key rings, etc. Therefore, “Coca-Cola” is obviously more famous and distinctive than “Cocoella”. Consumers are more familiar with “Coca-Cola” than “Cocoella”.

In view of the similarity between “Cocoella” and “Coca-Cola”; the fact that “Cocoella” is applied for use in goods that are similar with products in which “Coca-Cola” is applied for use; consumers’ high familiarity with “Coca-Cola”; and the diversity of Coca-Cola’s products; TIPO concludes that the registration of “Cocoella” may cause confusion with “Coca-Cola”. As a result, the contested trademark is cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ckZtQXpYR1ZmaXJweE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true    

Taiwan’s IP Office denied application for “ApplePie” in view of Apple Inc.’s iconic brand

On July 15, 2022, Taiwan’s IP Office (“TIPPO”) rejected trademark application for “ApplePie”, citing likelihood of confusion with “APPLE”, the famous brand of Apple Inc. (See below).

 

The application was filed on December 22, 2021 (see below), applying for use in goods under class 9, including satellite navigation Devices, GPS satellite signal receivers, satellite signal Receivers, internet equipment, internet sharing devices, vehicles navigation device, sound transmission device, sound transmission device, and video transmission device.

TIPO’s denial is based on the following:

1.      Article 30.1.10 of Trademark Law 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.

2.      As to similarity, TIPO finds “ApplePie” is highly similar with “APPLE”. The additional “Pie” presented in the application is insufficient to differentiate “ApplePie” from “APPLE”.

3.      As to the similarity of goods, the electronic products designated by applicant are related to products and services designated by Apple Inc.’s cited trademark (e.g., computers, mobile devices, navigating devices, computer hardware and software development, software for navigating and searching database, etc.), for they are usually sold or supplied through the same or related channels with overlapping customer base, and provide similar functions.

4.      TIPO further notes that Apple Inc.’s trademarks possesses great distinctiveness for the word “APPLE” bears no direct relationship with the nature or function of the products or services it represents. Thus, consumers are inclined to consider “APPLE” as sign indicating the source of the supplied goods or services.

5.      Given that “ApplePie” is highly similar with “APPLE”, that both marks are designated for use in associated or related goods, and that “APPLE” demonstrates great distinctiveness, TIPO opines it is likely that consumers may be confused and believe that the goods represented by “ApplePie” is also originated from or is related to Apple Inc. Therefore, the application is denied accordingly.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cFM4YWpWalQ2U3RmYWxyZHA3R3dZUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

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