Tattoo Artists Found Guilty For Using Others’ Copyrighted Works

In a decision rendered on May 17, 2023, Taipei District Court held two tattoo artists liable for copyright infringement by using copyrighted artwork to create tattoo for their customers.

According to the complainants, who are also tattoo artists, the Mandala and flower designs (see below) are all creative artworks that are eligible for copyright protection.

 

The complainants alleged that defendants’ tattoos (see below) are illegal copies created by using the complainants’ aforesaid copyrighted artworks.

 

The defendants contended that the Mandala and flower artworks alleged by the complainants are all natural forms that are too common to be protected as copyrighted work. In addition, the defendants denied any contact with complainant’s works, and argued that the defendants’ tattoos are substantially different from complainants’ works. 

Taipei District Court found for the complainants, reasoning that:

1.    The threshold for copyright protection is not as high as that for patent. The work need not be novel. Instead, a minimum degree of creativity that could reflect the author’s originality would be sufficient.

2.    While Mandala illustrations usually demonstrate similar pattern, i.e., drawn from the central point and surrounded by symbols or decorations that are connected and interrelated, the choice of pattern, color, and configuration may vary, and could demonstrate an artist’s creativity. Similarly, artworks featuring natural forms like flowers may also be eligible for copyright protection, for the style, color, and overall composition of the flower, its pistil, and petal could demonstrate the author’s originality. Here, the Court finds the complainants’ artworks demonstrate sufficient creativity that render the Mandala and flower designs eligible for copyright protection.

3.    As to access of artwork, the Court reasons that while there is no evidence showing direct contact, the facts that both complainants and defendants are tattoo artists, and that both the defendants and complainants would share their tattoo works on social medial like Instagram and Facebook, justify an inference that it is likely that defendants may access complainants artwork via their social media networks.

4.    As to similarity analysis, the Court agrees with the expert’s opinion, finding that the defendants’ tattoos are derivative works based on complainants’ copyrighted artworks. Under the “total-concept-and-feel” test, while there are some differences between defendants’ tattoos and complainants’ artworks, the similarity between defendants’ and complainants’ works is still so high that the Court finds it difficult to believe it is based on defendants’ independent authorship, not copying.

5.    Based on the forgoing reasons, the Court is convinced that the defendants violate Copyright Act by, without complainants’ license, creating derivative works based on complainants’ copyrighted artworks.   

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=TPDM,111%2c%e6%99%ba%e6%98%93%2c27%2c20230517%2c1  

“TeaTok” v. “TikTok”

TIKTOK LTD. (“TIKTOK”), the trademark holder of “TikTok” in Taiwan, prevailed in its opposition against CJ FOOD AND BEVERAGE BEIJING COMPANY LIMITED (“CJ FOOD”), convincing Taiwan’s IP Office (“TIPO”) that consumers would confuse TIKTOK’s famous trademark “TikTok” (see below) with CJ FOOD’s registration of “TeaTok”.

 

CJ FOOD’s trademark, i.e., the contested trademark, “TeaTok” (Reg. No. 02184656, see below), was filed for registration on May 4, 2021, and granted on November 16, 2021, designated for use in various services under class 35 (including marketing, advertising, providing information or consultation for consumer’s purchase of goods or services, advertising on computer network, etc.) and class 43 (including coffee shop, tea shop, ice cream shop, fast food restaurant, etc.). TIKTOK filed opposition against CJ FOOD on February 10, 2022, citing violation of, among the others, Article 30.1.11 of Trademark Act.

 

TIPO ruled in TIKTOK’s favor on May 11, 2023, finding registration of “TeaTok” would cause confusion among the relevant public due to its similarity with “TikTok”:

1.    To begin with, 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.    In this case, TIPO affirmed that “TikTok” as a trademark has achieved the well-known status, given the worldwide popularity of the short-form video platform and its staggering number of monthly active users around the globe (more than 1 billion ). In fact, in its prior determinations, TIPO had agreed that “TikTok” is well-known for social media service.

3.    TIPO also found “TeaTok” visually and verbally similar with “TikTok”, and noted that “TikTok” is highly distinctive and has been used in various kinds of services. For example, by partnering with Shopify in 2021, TIKTOK developed in-app purchase services, making one step further into the market of e-commerce. Users could purchase clothing and other products at TikTok Store. In 2020, by teaming up with POSTMATES, TIKTOK delivered service “TIKTOK TREATS”, in which products like cereal, coffee, and Bento box were available.

4.    In view of the above, although CJ FOOD’s “TeaTok” is designated for use in services like advertising, marketing (class 35) and restaurant (class 43), TIPO found these services are associated with or related to the e-commerce and food delivery service provided by TIKTOK. As such, the relevant consumers may be confused by CJ FOOD’s “TeaTok” due to its high similarity with TIKTOK’s famous “TikTok”.

 

Based on the aforesaid reasons, TIPO determined that CJ FOOD’s “TeaTok” should be canceled in accordance with Article 30.1.11 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4b1ZWSDBaeW9PNmVZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LinkedIn lost in its attempt to cancel a registered trademark that also features “in”

On April 27, 2023, Taiwan’s IP Office (“TIPO”) denied the opposition filed by LinkedIn Corporation (“LinkedIn”), finding LinkedIn’s mark (Reg. No. 0147814, see below) would not be confused or diluted due to the registration of No. 02187223 trademark. 

The registration no. 02187223 trademark, namely, the contested trademark, (see below), was filed by Inline Apps Limited (“Inline”) on June 22, 2021, and granted on December 1, 2021, designated for use in services under class 36, including third party payment service, credit card/ debit card service, banking service, virtual currency, electronic transfer of fund, payment process, etc. LinkedIn filed opposition on March 1, 2022, alleging that the registration of the contested trademark violates Article 30.1.11 of Trademark Act.

LinkedIn alleges that its mark is famous as it is one of the most popular social media platforms, and has more than 740 million registered members from 150 different countries around the world. In Taiwan, LinkedIn registered trademark in as early as 2011, and such trademark has become well-known after LinkedIn’s continuous use in its social media service. LinkedIn argues that since the contested trademark and LinkedIn’s trademark both feature similar word “in”, the contested trademark is highly similar with LinkedIn’s trademark, and that registration of the contested trademark may cause confusion with LinkedIn’s famous trademark.

 

In its determination on April 27, 2023, TIPO sided with Inline, reasoning that:

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 among the relevant public, or likelihood of dilution of distinctiveness or reputation of the well-known trademark.

2.        Indeed, both Inline’s trademark and LinkedIn’s trademark feature the word “in”, and both words “in” are embedded in color squares. The contested trademark is thus visually, conceptually, and verbally similar with Linkedin’s trademark.

3.        As to the well-known status of LinkedIn’s trademark, the evidence submitted by Linkedin is insufficient to support a finding in its favor. While according to local news, there are around 2.5 million users registered in Taiwan, there is no data to support such figures. There indeed are news reports covering the popularity of LinkedIn, but LinkedIn’s trademark does not appear in every one of them. In addition, among the Taiwanese between the age of 25-29, only about 2% of them are using LinkedIn’s service. Thus, the evidence submitted by LinkedIn is insufficient to support its statement that its mark is well-known.

4.        “in” is a common word with ordinary meaning. While such word is distinctive when being used in the field of financial or social media service, it is noted that LinkedIn’s trademark is primarily used for social media service, and less in goods and service under class 9, 35, 38, 41, 42, and 45. There is no record showing LinkedIn’s service has actually expanded to other areas.

5.        Although Linkedin argues that Inline’s application is based on bad faith, records show that there are other registered trademarks in Taiwan that use similar word “in” as part of the trademark. Besides, there are still noticeable differences in terms of color and font style between Inline’s and LinkedIn’s trademarks. Based on the records at hand, TIPO does not consider Inline’s application was based on bad faith.

6.    In view of the above, although Inline’s trademark is similar with LinkedIn’s trademark, the evidence submitted by LinkedIn is insufficient to show its trademark is famous among the relevant public. Further, the goods and services designated by LinkedIn’s trademark are different from and unrelated to those designated by the contested trademark, and there is no record showing LinkedIn has expanded its business to service that is similar with or related to Inline’s designated services. Registration of Inline’s contested trademark would not cause confusion with LinkedIn’s trademark. Furthermore, there is no evidence indicating Inline’s use of the contested trademark is based on bad faith or would damage or dilute the distinctiveness of Linkedin’s trademark. Registration of Inline’s contested trademark does not violate Article 30.1.11 of Trademark Act. Hence, LinkedIn’s opposition against Inline should be denied accordingly.

 

Source: 

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RE5GUUNxak1aM3dicXVvMkU2bjludz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

GE prevailed in its trademark opposition against “GREEN ELITE GE”

In its determination on March 31, 2023, Taiwan’s IP Office (“TIPO”) sided with GENERAL ELECTRIC COMPANY (“GE”), finding “GREEN ELITE GE” should be canceled due to likelihood of confusion with GE’s famous trademarks (Reg. No. 00001021,00009344,00066010,00120997,00124108,00124109,00981983,01334183,01334187, see below).

 

The contested trademark, “GREEN ELITE GE” (Reg. No. 02143427, see below), was filed for registration on November 25, 2020, and granted on June 1, 2021, designated for use in goods under class 5, including nutritional supplements, vitamin preparations, food therapy products for medical use, human medicines, traditional Chinese medicines, pesticides, breast pads, freeze-dried food for medical use, medicated soap, medicated oral cleanser, healing candle massage oil, etc. GE filed opposition on August 27, 2021, citing violation of, among the others, Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO found in favor of GE, confirming the registration of the contested trademark may cause confusion with GE’s aforesaid famous trademarks:

 

1.    According to Article 30.1.11 of Trademark Act, a mark shall not be registered if such 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.    On whether GE’s trademarks are well-known, TIPO confirms that GE has produced sufficient evidence to support its contention that its trademarks are famous among the general public. Starting from 1950, GE’s products have been adopted and used in a variety of Taiwan’s basic infrastructures. From the illuminating facilities for highway, airport, and railroad systems, to the daily commodities that support countless Taiwan’s households and families, image of GE’s brand has been deeply planted in Taiwanese’s minds, and the general public is familiar with the ”GE” trademarks.

3.    On similarity, TIPO notes that the contested trademark “GREEN ELITE GE” and GE’s cited trademarks “GE” all share the common English letters “G” and “E”, and opines that “GE” and “GREEN ELITE GE” are visually and orally similar with each other. As such, ordinary consumers may find the source of the goods supplied under “GREEN ELITE GE” is the same as or related to the source of the goods supplied under “GE”.

4.    On distinctiveness, TIPO sides with GE and finds that GE’s famous trademarks are more recognizable than “GREEN ELITE GE” and are highly distinctive among the general public in Taiwan. Ordinary consumers are more familiar with GE’s aforesaid famous trademarks.

5.    Further, GE’s product lines are highly diverse. Over the past couple of years, GE’s product territories have expanded from appliances and medical devices to products like disinfectants and diagnostic reagents. Thus, it is likely that GE may enter product field that is similar with or related to that as designated by the contested trademark.

6.    In view of the well-known status of “GE” trademarks, the similarity between “GE” and “GREEN ELITE GE”, the fact that “GE” is highly distinctive and consumers are more familiar with “GE”, and that based on GE’s diverse product lines, GE is likely to supply products that are associated with or related to those as designated by “GREEN ELITE GE”, TIPO determines that the registration of “GREEN ELITE GE” may cause confusion with GE’s famous trademarks in the relevant consumers. As such, the contested trademark should be canceled accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U0hVYzhtSGc4RlhReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Taiwan’s IP Office denied educational institute’s trademark application for “MUSKKIDS”, finding “MUSK” is the name of the well-known founder of Tesla

 On May 4, 2022, KIDSBURGH INTERNATIONAL BUSINESS CO., LTD. (“KIDSBURGH”), an educational institute for kids in Taiwan, filed trademark application for “MUSKKIDS” (application No. 111031214, see below), intending to use in services under class 41, such as educational services, cram schools, teaching services, kindergartens, training services, educational training, organizing educational competitions, organizing entertainment competitions, arranging and holding seminar events, organizing exhibitions for cultural or educational purposes, etc.

 

Taiwan’s IP Office (“TIPO”) denied KIDSBURGH’s application on March 15, 2023, reasoning that:

1.    According to Article 30.1.13 of Trademark Act, a mark shall not be registered if such a mark “contains another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application.”

2.    Here, KIDSBURGH’s application “MUSKKIDS” consists of “MUSK” and “KIDS”, and “MUSK” is the name of Mr. Elon Musk, the founder and CEO of many successful companies including SpaceX, Tesla, Neuralink, etc. Particularly, in 2022, Mr. Musk was not only ranked as the richest billionaire around the globe, but has successfully acquired Twitter, the Top 3 social media most frequently used by Taiwanese, in the same year. Through the continuous and worldwide coverage of news about Mr. Musk, his name “Musk” has become well-known among the relevant public in Taiwan.

3.    Since KIDSBURGH was unable to provide evidence showing Mr. Musk’s consent or any responses supporting its trademark application for “MUSKKIDS”, such application shall be found violating Article 30.1.13 of Trademark Act. Hence, KIDSBURGH’s application is denied accordingly.

Similarly, KIDSBURGH’s application for “小小馬斯克” (application no. 111031210), which contains “馬斯克”, the Chinese transliteration of “MUSK”, is also denied by TIPO based on the same legal ground.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UGs2OFc2R0ptcWt5TVlJNURZTUtPZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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