Taiwan’s IP Office found using “Grammy” on building materials may dilute the distinctiveness of Recording Academy’s famous trademark “GRAMMY RECORDINGS”

National Academy of Recording Arts & Sciences, Inc., (the “Academy”) the registrant of No. 01292235 trademark (See below) in Taiwan, filed opposition against KUEN YEU ENTERPRISE CO., LTD. (“KYE”) on December 15, 2021. The Academy contended that the registration of KYE’s trademark should be canceled for violating, among the others, Article 30.1.11, of Trademark Act.

 

KYE’s contested trademark (Reg. No. 02168865, see below) was filed for registration on November 16, 2020, and granted on September 16, 2021, designated for use in goods under class 19, including various kinds of building materials like water-proof boards, moisture-proof wood boards, and fire-resistant wood boards. Taiwan’s IP Office (“TIPO”) entered decision on February 24, 2023, finding registration of KYE’s trademark shall be canceled.

 

TIPO’s reasonings are as follows:

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

2.    “GRAMMY RECORDINGS” is distinctive and has been well-known due to the Academy’s renowned musical award ceremony, which has been made popular and highly recognizable among the relevant public in Taiwan. The Academy also submitted numerous court’s decisions and prior determinations made by TIPO itself to support the well-known status of “GRAMMY RECORDINGS”, and TIPO finds them convincing. Thus, TIPO sides with Academy by affirming “GRAMMY RECORDINGS” is well-known to the relevant public.

3.    As to similarity, both KYE’s contested trademark and Academy’s “GRAMMY RECORDINGS” feature the word “Grammy”, and TIPO considers “Grammy” constitutes the dominant portion of the two trademarks. As such, KYE’s contested trademark and Academy’s “GRAMMY RECORDINGS” are considered highly similar with each other.

4.    The word “GRAMMY” has no ordinary meaning, and has developed unique connection with Academy and its musical award. Upon seeing the word “GRAMMY”, the general public would immediately recognize the relevant awards presented by the Academy for the musical industry. Further, TIPO notes that registering “GRAMMY” as trademark is quite rare in Taiwan, and that the records show that all the registered trademarks containing the word “GRAMMY” are owned by the Academy, except for the one registered by KYE. Thus, TIPO posits that “GRAMMY RECORDINGS” is highly distinctive and should be awarded with greater protection when weighing against KYE’s contested trademark.

5.    In view of the above, although the designated products of KYE’s trademark are different from those designated by the Academy, the unique capacity for Academy’s well-known “GRAMMY RECORDINGS” to signify single source of goods or services may be harmed due to the high similarity between Academy’s and KYE’s trademarks. As such, TIPO determines that registration of KYE’s trademark may cause dilution to the distinctiveness of Academy’s well-known trademark, and that the contested trademark should be canceled accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4d09oODl4RXdqTk1mbE1yU3BvM3Fxdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Fashion brand “JIMMY CHOO” successful in trademark opposition against Korean Brand “CHUU”

In a trademark opposition initiated by J. CHOO LIMITED (“J. CHOO”) against Korean brand “CHUU”, Taiwan’s IP Office (“TIPO”) sided with J. CHOO, finding “CHUU” should be canceled due to likelihood of confusion with J. CHOO’s registered trademarks “CHOO” (Reg. No. 01661633, 01888397, 02003379, 01539950, and 01744963, see below).

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“CHUU”, a trademark held by Korean brand PPB STUDIOS CO. (“PPB”), was filed for registration on January 8, 2020, and granted on December 1, 2020 (Reg. No. 02104604, see below), designated for use in goods under class 25, including vests, sweaters, shirts, t-shirt, suits, trousers, coats, jackets, garments, shoes, scarves, socks, gloves, belts, etc. J. CHOO filed opposition on February 25, 2021, citing, among the others, violation of Article 30.1.10 of Trademark Law.

 

TIPO ruled in favor of J. CHOO on February 9, 2023, reasoning that:

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.      Here, TIPO finds the contested trademark “CHUU” similar with the cited “CHOO” in that both start with “CH”, and the last two letters “UU” resemble “OO” in its visual impression. In its entirety, TIPO consider “CHUU” visually and verbally similar with “CHOO”.

3.      As to the designated goods, both J. CHOO’s cited trademarks and PPB’s contested trademark are put in use on apparel, clothing, and the related accessories. These products are identical to or similar with each other in their nature, so TIPO considers the degree of similarity is high.

4.      The brand “JIMMY CHOO” is originated from the name of J. CHOO’s founding designer, and is not related to the nature or function of the designated products. In addition, TIPO finds J. CHOO’s cited trademarks distinctive, and highly popular within the relevant consumers after years of successful marketing and branding around the globe. Consumers in Taiwan are more familiar with “CHOO”.

5.      Although there is evidence showing the Korean brand “CHUU” has also been used on various kinds of apparel and known by consumers in Taiwan since 2014, TIPO considers such evidence, when comparing against the voluminous evidence of trademark use of “CHOO”, is insufficient to show “CHUU” is famous enough so that consumers in Taiwan could distinguish “CHOO” from “CHUU”.

 

In view of the above, given that “CHUU” is similar with “CHOO”, that both trademarks are designated for use in highly similar products, that “CHOO” is distinctive and more famous and known by the relevant consumers, TIPO is convinced that the registration of “CHUU” may cause confusion with J. CHOO’s “CHOO”. As such, PPB’s trademark “CHUU” is canceled accordingly.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dzJNejUvQkdKZWo0dm83YWNqNlhnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

APPLE prevailed in trademark opposition for its famous apple logo

On January 19, 2023, Taiwan’s IP Office (“TIPO”) sided with APPLE INC. (“APPLE”), finding the registration of a mark filed by ORANGE TECHNIC CO., LTD. (“ORANGE”) may cause confusion with the tech giant’s famous apple logo (e.g., Reg. No. 01089047, 00223846, 01620273, 00188598, and 00012763, see below).

 
The contested trademark, “O.T.” (Reg. No. 02194372, see below), was filed by ORANGE on April 19, 2021, and granted for registration on January 1, 2022, designated for use in service under class 42, including platform as a service (PaaS), building and maintaining websites, software as a service (SaaS), cloud computing, information technology consulting, development of computer platforms, computer system design, computer Software design, consulting on computer hardware design and development, programming, data processing, website planning and construction, network security management services, network security consulting, etc.

APPLE filed opposition against ORANGE on March 29, 2022, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

In its determination made on January 19, 2023, TIPO found the registration of the contested trademark has violated Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark 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.    On similarity, TIPO’s focus is on the red circular body and the oval leaf, which TIPO believes would form a visual impression of a red fruit with a separated oval leaf. Although there is no other element suggesting “what kind of fruit” is presented in the contested trademark, TIPO considers it would be easy for ordinary consumers to figure that a red apple is presented. As such, TIPO opines the contested trademark is conceptually and visually similar with APPLE’s cited trademark. The degree of similarity should be medium.

3.    As to the similarity of the designated services, TIPO finds APPLE’s cited trademarks are also applied for use in various kinds of products and services, such as computer software, computer hardware, server, software design, information communication technology, website design, intranet service, internet service, etc. TIPO finds these products and services are related to or associated with the services designated by the contested trademark, for they are usually used or sold in conjunction with each other, and solve similar need for consumers.

4.    According to the supporting evidence submitted by APPLE, including prior court decisions and TIPO’s prior determinations, it is clear from TIPO’s standpoint that APPLE’s logo has established strong recognizability among the consumers, and TIPO views such high distinctiveness warrants a more favorable consideration when evaluating likelihood of confusion.

 

Based on the above, in light of the medium degree of similarity between APPLE’s cited trademarks and the contested trademark, the similarity of the designated services, the high distinctiveness of APPLE’s trademarks, and the fact that consumers are more familiar with APPLE’s trademarks, TIPO concluded that registration of the contested trademark may cause confusion among the relevant consumers. Thus, TIPO determines that the contested trademark should be canceled in accordance with Article 30.1.10 of Trademark Act.  

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SXJEaUJwQjZSNTdETXFVNktzdnJCdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Cosmetics giant L’OREAL successful in opposition proceeding against ‘Joereal’ on ground of likelihood of confusion

On January 13, 2023, Taiwan’s IP Office (“TIPO”) found trademark “Joereal” should be canceled in view of likelihood of confusion with senior trademarks “L’OREAL” (Reg. No. 00293516, 00313008, 00321107, 00323205, and 02132673, together as “L’OREAL”, see below) held by the French beauty giant L'OREAL, S.A.

 

The canceled trademark, “Joereal” (Reg. No. 02156922, see below), was filed on January 22, 2021, and granted for registration on August 1, 2021. “Joereal” was applied for use in goods in class 3, including cosmetics, collagen preparations for cosmetic use, creams for whitening skin, masks, face creams, skin care products, skin care lotions, makeup removers, shampoos, hair care products, cleanser for human body, soap, mouthwash, etc. L'OREAL, S.A. filed opposition against “Joereal” on October 29, 2021, alleging violation of, among the others, Article 30.1.10 of Trademark Act.

 

TIPO sides with L'OREAL, S.A. in its determination of January 13, 2023:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is “being 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.      On similarity of trademark, TIPO holds the view that while “Joeoreal” is slightly different from “L’OREAL” in its composition of characters, the pronunciation of “Joereal” is similar with that of “L’OREAL”. TIPO agrees with L'OREAL, S.A. and finds there should be medium degree of similarity between “Joereal” and “L’OREAL”.

3.      As to the designated use of goods, TIPO finds that trademark “L’OREAL” is not only applied for use in various kinds of cosmetics such as perfume, lipstick, eyeshadow, eyeliner, etc., but also body cleansers including bath gel, lotion, body powder, shampoo, soap, conditioner, etc. As such, TIPO considers “Joereal” and “L’OREAL” are applied for use in similar goods. They serve similar or related functions, and are usually sold to consumers via similar channels. The degree of similarity is high.

4.      Based on the report of internet search result, trademark search report, and report of Wikipedia, TIPO finds the records submitted by L'OREAL, S.A. sufficient to prove that “L’OREAL” has been widely used on numerous makeup and cosmetics, and has established popularity and recognizability among the relevant consumers. In comparison, TIPO finds there is little record supporting the distinctiveness of “Joereal”. Hence, on the determination of distinctiveness, TIPO finds such factor tips to the favor of L'OREAL, S.A.

   

In view of the above, given that there is medium degree of similarity between “L’OREAL” and “Joereal”, that the designated products of “Joereal” are highly similar with and related to those designated by “L’OREAL”, and that “L’OREAL” is highly distinctive and more recognizable by the consumers, TIPO concludes that the registration of “Joereal” may cause confusion among the relevant consumers due to its similarity with “L’OREAL”. As a result, registration of “Joereal” is canceled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cm1uYU5hallWUmV4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled “Volover” in view of similarity with “VOLVO” in trademark opposition

VOLVO TRADEMARK HOLDING AB (“VTH”) successfully convinced Taiwan’s IP Office (“TIPO”) in its opposition against trademark “Volover”, having the contested trademark canceled due to likelihood of confusion with its famous “VOLVO” trademarks (e.g., Reg. No. 01789958 and 01293880, see below).

 

The contested trademark “Volover” (see below) was filed for registration on November 30, 2020, and was granted on August 1, 2021 (Reg. No. 02156832), designated for use in goods under class 3, including cosmetics, body cleanser, face cream, lotion, body cream, skin whitening cream, lotion, cleanser, sunscreen, face mask, body gel, moisturizer, massage cream, essential oil, wrinkle cream, nutritional cream, etc. VTH filed opposition on October 29, 2021, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On December 30, 2022, TIPO found for VTH, determining that the registration of the contested trademark should be canceled due to violating at least Article 30.1.11 of Trademark Act.

 

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

2.    Here, TIPO firstly notes that the contested trademark “Volover” and VTH’s “VOLVO” both start with “V”, “O”, and “L”, followed by similar combination of letters “ov” and “VO” respectively. Considering the similar sequence and composition of these letters, TIPO opines “volover” and “VOLVO” are similar with each other.

3.    As to the status of “VOLVO”, after reviewing VTH’s supporting materials, such as market survey report, marketing material, and prior judicial finding made by Taiwan’s IP Court in 2013, TIPO is convinced that prior to the filing of the contested trademark in 2020, “VOLVO” as a trademark has been well-known in auto industry.

4.    Meanwhile, TIPO considers “VOLVO” highly distinctive, given that the meaning of such trademark is not related to the nature and function of product and service for which it is applied for use, and that “VOLVO” has been marketed and used by VTH for a very long time. In general, consumers are more familiar with “VOLVO”.

5.    Although the contested trademark is designated for use in cosmetic product, which is not the product field in which “VOLVO” enjoys its well-known status, TIPO finds “VOLVO” in fact has been put in use on diversified product lines, and VTH also acquired registration of “VOLVO” that is designated for use in products like perfume and fragrance. Thus, TIPO holds the view that the brand territory of “VOLVO” may expand to similar cosmetic product, and that consumers may be confused by registration of “Volover” due to its similarity with “VOLVO”.

 

Based on the reasoning above, considering that “Volover” is similar with “VOLVO”, that “VOLVO” is well-known and highly distinctive, and that consumers are more familiar with “VOLVO”, TIPO finds the registration of “Volover” is likely to caused confusion with VTH’s famous “VOLVO” trademark. Therefore, the contested trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bjhBT21aZDZlSVU0bEEvMDUreVhhUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Apple successfully canceled “HiTune” in view of similarity with its famous “iTunes” trademark

In a trademark opposition initiated by Apple Inc., Taiwan’s IP Office (“TIPO”) ruled in tech giant’s favor, finding the contested trademark “HiTune” confusingly similar with Apple’s famous “iTunes” trademarks (Reg. No. 01020430, 01716278, and 02076944, see below).

The contested trademark, “HiTune” (Reg. No. 02114569, see below), was filed for registration on August 18, 2020, and granted on January 16, 2021, designated for use in goods under class 9, including data processing equipment, random access memory, earphones, headphones, microphones, audio-video receivers, sound transmitters, battery chargers, cables, data readers, downloadable application software, sound recording apparatus, portable media players, tuning devices, network communication equipment, and wearable electronic devices. Apple filed opposition against the registration of “HiTune” on April 15, 2021, alleging violation of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO sided with the tech giant on November 28, 2022, finding:

1.    The contested trademark is similar with Apple’s cited “iTunes” trademarks. Although the initial letter of the contested trademark (i.e., “H”) is different from that of Apple’s cited trademarks (i.e., “i”), consumer’s overall visual impression of the contested trademark would still be “Tune”. Additionally, the pronunciation of “HiTune” is also similar with that of “iTunes”. TIPO therefore determines the contested trademark is verbally and visually similar with Apple’s cited trademarks.

2.    As to similarity of the designated goods, TIPO is of the view that Apple’s “iTunes” trademarks are applied for use in products like computer software, mobile phone, internet equipments, downloadable multimedia files, cpu, data processor, speaker, wearable device, etc., which are associated with the function of products designated by the contested trademark. For example, the designated applications and softwares of both trademarks could be used on computers and wearable devices. Hence, consumers may consider Apple’s “iTunes” and the contested “HiTune” are applied for use in similar products. 

3.    While TIPO recognizes that both Apple’s “iTunes” and the contested “HiTune” are distinctive in nature, TIPO, after reviewing the evidence of trademark use, finds there is no record that could support consumer’s familiarity with the contested trademark “HiTune”. In contrast, based on Apple’s supporting evidence, “iTunes” has become widely popular among the relevant public due to the success of Apple’s iPOD and iOS products. Therefore, Taiwan’s consumers are more familiar with Apple’s “iTunes” trademarks.

 

In view of the similarity between “HiTune” and “iTunes”, the similarity of the designated goods, the high distinctiveness of and consumer’s familiarity with  Apple’s “iTunes”, TIPO determines that the registration of “HiTune” may cause confusion with Apple’s “iTunes”. As such, registration of “HiTune” is canceled in accordance with Article 30.1.10 of Trademark Act.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c2hmYVlUcG9tMHBYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

CHANEL scores a win for its “CHANCE” trademark in opposition against “All Chance”

“CHANCE” (Reg. No. 00532971, see below) is a trademark filed and registered by CHANEL in Taiwan in as early as 1991, designated for use in fragrances, lotions, deodorant, and cosmetics. Over the years, “Chance” has gathered considerable popularity through CHANEL’s use on series of its perfume and cosmetic products.

On April 24, 2020, a Taiwan-based company “All Chance Co. Ltd.” filed trademark application for “All Chance” (Reg. No. 02105460, see below), which was granted on December 1, 2020, designated for use in numerous services under class 35, such as advertising concept development, online advertising design, advertising promotion, advertising agency, business research, marketing consultants, internet shopping, retail and wholesale of cosmetics, and retail and wholesale of maternity and infant products.

CHANEL filed opposition against “All Chance” on February 26, 2021, alleging that for the service “retail and wholesale of cosmetics”, the registration of the contested trademark violates Article 30.1.10 of Trademark Act.

 

On November 30, 2022, Taiwan’s IP Office (“TIPO”) sided with CHANEL, finding “All Chance” used for “retail and wholesale of cosmetics” would cause confusion with CHANEL’s cited trademark “CHANCE”:

 

1.    On similarity, TIPO holds that “All Chance” is conceptually and visually similar with “Chance”. The additional word “All” is not distinctive and would not be sufficient to make “All Chance” as a whole distinguishable from “CHANCE”. Ordinary consumers would still find “Chance” constitutes the dominant portion of the contested trademark.

2.    TIPO also notes that CHANEL’s “CHANCE” is applied for use in cosmetic products, and “All Chance” is used for retail and wholesale of cosmetics. Both the products and services pertain to beauty, body cleaning, personal hygiene, or similar functions. Thus, TIPO is of the view that ordinary consumers would consider the designated goods and services related to each other.

3.    On distinctiveness, TIPO opines that while “CHANCE” has ordinary meaning, it is still distinctive for it bears no relationship with the nature or function of the designated cosmetic products. Besides, due to CHANEL’s years of marketing and use, “CHANCE” has been quite popular, and the relevant consumers are more familiar with CHANEL’s “CHANCE”.

 

In view of the above, given the similarity between “CHANCE” and “All Chance”, the relatedness between the designated cosmetic products and the retail service, the distinctiveness of “CHANCE”, and the fact that consumers are more familiar with CHANEL’s cited trademark, TIPO finds registration of “All Chance” for service under “retail and wholesale of cosmetics” would cause confusion with CHANEL’s “CHANCE” among the relevant consumers.

 

As a result, TIPO rendered a determination in CHANEL’s favor.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YnE2UUNMVDN5OWRYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true