“ZARA” prevailed in trademark opposition against “ZORA”

INDUSTRIA DE DISENO TEXTIL, S.A. (“IDT”), the registrant of trademark no. 01595432 (ZARA), 01520397 (ZARA HOME), 01483363 (ZARA BASIC), and 01406674 (ZARA) (all see below), successfully contested the registration of trademark “ZORA” in opposition proceeding, convincing Taiwan’s IP Office (“TIPO”) that the contested trademark will cause confusion and should be canceled.

 

l   Background:

The contested trademark, “ZORA” (no. 02152721, see below), was filed by HON TU INTERNATIONAL. CO., LTD (“HTI”) on October 16, 2020, and granted on July 1, 2021, designating for use in goods and services under class 3 (e.g., facial cream, body lotion, skin care cream, cosmetics, etc.), class 5 (e.g., mineral nutritional supplements, protein nutritional supplements, vitamin supplements, etc.), and class 35 (e.g., retails service for cosmetics, food, and nutritional supplement).

IDT filed opposition on September 29, 2021, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. 

l   TIPO’s decision:

TIPO found in IDT’s favor on July 31, 2023, determining that registration of the contested trademark violates Article 30.1.10 of Trademark Act, which 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.”

l   Reasons held by TIPO:

1.    TIPO finds HTI’s “ZORA” similar with IDT’s above cited trademarks. Although there are other word elements, such as “nature”, “home”, and “basic” presented, such additional elements are all ordinary words that are not distinctive. Therefore, consumers would consider “ZORA” and “ZARA” the dominant portions, and find the two verbally and visually similar with each other.

2.    HTI argued that “ZORA” is applied for use in cosmetics, and nutritional supplements, and IDT’s “ZARA” is used on apparel product. The products represented by the contested trademark should be dissimilar with those by IDT’s cited trademarks. TIPO disagrees, and reasons that determination on similarity under Article 30.1.10 should be based on the specific class of product identified in the trademark registration, not on the product on which the trademark is actually applied. Here, TIPO finds IDT’s cited trademarks are also designated for use in similar cosmetic, nutritional, and personal hygiene products, including baby food, medical nutrition, perfume, cosmetics, shampoo, facial cream, etc. Based on the class of products designated by IDT’s trademark registration and those designated by HTI’s contested trademark, consumers would find similarity since both serve similar function or purpose.

3.    TIPO acknowledges that “ZORA” has been used in cosmetic products and has established certain degree of brand recognition among the consumers. However, TIPO also notes that “ZARA” is highly distinctive, and consumers are familiar with such brand. Evidence of trademark use submitted by HTI is not sufficient to prove that “ZORA” has been famous enough so that consumers could distinguish HTI’s “ZORA” from IDT’s “ZARA”.

4.    In light of the above, given that “ZORA” is highly similar with “ZARA”, that “ZORA” is designated for use in similar goods and services, that consumers are familiar with “ZARA”, and the fact that “ZARA” is highly distinctive, TIPO concludes that HTI’s contested trademark may cause confusion among the relevant consumers, and thus should be canceled according to Article 30.1.10 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUJMWStvUE5UNmFTa1YvMDdiTnpyUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

ROGER VIVIER S.P.A. successful in trademark opposition against “RV REESEY VIVIER”

On December 30, 2021, ROGER VIVIER S.P.A. (“RV”), the registrant of Taiwan trademarks no. 01168072 and no. 01064655 (see below), filed opposition against the registration of trademark “RV REESEY VIVIER”, alleging that the registration of the contested trademark violated Article 30.1.10 and 30.1.11 of Trademark Act.

 

The contested trademark, “RV REESEY VIVIER” (Reg. No. 02171642, see below), was filed for registration on September 22, 2020, and granted on October 1, 2021, designated for use in goods under class 3, including cosmetic and personal hygiene products such as facial creams, skin care, shampoo, sunscreen, body lotions, etc.

 

Taiwan’s IP Office (“TIPO”) found for RV on July 11, 2023, determining that the registration of the contested trademark has violated Article 30.1.1 of Trademark Act:

 

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, TIPO notes that the contested trademark consists of “REESEY VIVIER”, “RV”, and an oval decorative ring with small words “REESEY VIVIER A PARTIR DE BEAUTE MEDICALE PRODUITS DE S0INS AVANCES” embedded within said ring. Since the small words embedded in said oval ring are French that describes the nature and quality of the designated product, TIPO considered these words descriptive and would not be considered distinctive by the consumers. Therefore, the words “REESEY VIVIER”, and “RV” featured in the contested trademark would form the major impression upon the consumers. In this regard, the contested trademark is visually, conceptually, and orally similar with RV’s cited trademarks, which also feature “RV” and similar word “ROGER VIVIER”.

3.      As to similarity of the designated products, RV’s cited trademarks are designated for use in products like perfume, deodorants, soaps, shaving soaps, hair conditioners, etc. While these products are not identical to those designated by the contested trademark, they serve similar purposes for cleaning and deodorization. Thus, TIPO considers RV’s cited trademarks and the contested trademark are applied for use in similar products.

4.      As RV’s cited trademarks are name of person that are not related to the quality or nature of the designated products, TIPO considers them distinctive. Moreover, based on the marketing materials, catalogues, and continuous media exposure between 2013~2020, including the local store opened in BELLAVITA in 2009, TIPO is convinced that RV’s trademarks should be well-known among the relevant public in the fields of footwear, fragrance, and skin care before the filing of the contested trademark.

 

Given that contested trademark is similar with RV’s cited trademarks, that both trademarks are applied for use in similar products, that RV’s cited trademarks are distinctive and have become famous among the relevant public, TIPO determines that the registration of “RV REESEY VIVIER” may cause confusion among the relevant public. Hence, the registration of the contested trademark is canceled based on Article 30.1.10 of Trademark Act accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RkI3WVJjMDdWZElRNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

JAGUAR prevailed in trademark opposition over “OWC Rover Pro”

On July 14, 2023, Taiwan’s IP Office (“TIPO”) sided with the luxury vehicle brand, Jaguar, finding its trademarks “ROVER”, “LAND ROVER”, and “RANGE ROVER” (Reg. No. 02019128, 02049069, and 02049080, see below) may be confused due to the registration of the contested trademark “OWC Rover Pro”, and canceled the contested trademark accordingly.

The contested trademark, “OWC Rover Pro” (Reg. No. 02140569, see below), was filed on September 18, 2020, and registered on May 16, 2021, designated for use in goods under class 9, including laptop racks, computer hardware, batteries and battery chargers, computer data storage devices, and computer software for backing up and storing computer data. Jaguar filed opposition on July 30, 2021, citing violation of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO found for Jaguar on July 14, 2023, determining that the contested trademark should be canceled based on Article 30.1.10 of Trademark Act:

 

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if:  1) such a mark is 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.    On similarity, TIPO considers the contested trademark “OWC Rover Pro” similar with Jaguar’s above cited trademarks for all of them share similar word “Rover/ROVER”. While there are additional words such as “LAND” and “RANGE” (in Jaguar’s cited trademarks) and “OWC” and “Pro” (in the contested trademark), “Rover/ROVER” should be the dominant part of these trademarks, and ordinary consumers may still find these trademarks visually similar with each other.

3.    As to the designated use of goods, TIPO notes that Jaguar’s trademarks are applied for use in products such as computers for vehicles, computers for self-driving vehicles, computer control equipment for providing driving and parking assistance, and computer software and hardware for automobiles. Although these products are not identical with those designated by the contested trademark, they are all related to computer hardware and software, and serve similar purposes and functions. Thus, TIPO considers that the contested trademark is applied for use in products that are similar to or associated with those designated by Jaguar’s above cited trademarks.

4.    Further, based on the records of trademark use, including sales of vehicles, advertising expenditures, marketing materials, and news reports, TIPO confirms that Jaguar’s “ROVER”, “LAND ROVER”, and “RANGE ROVER” are distinctive and should be known to the relevant public, especially in the field of automobile. Since consumers are more familiar with Jaguar’s trademarks, TIPO opines more favorable weights should be awarded to Jaguar’s trademarks than to the contested trademark.

5.    In view of the above, given that the contested trademark is similar with Jaguar’s cited trademarks, that the contested trademark is applied for use in similar products, that Jaguar’s trademarks are highly distinctive, and that consumers are more familiar with Jaguar’s trademarks, TIPO concludes that the registration of contested trademark might cause confusion among the relevant public. Hence, TIPO rules that the registration of “OWC Rover Pro” should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4N2J1QkZMZ0tvZ3YzS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

TutorABC prevailed on remand, convincing the court that Jeda’s trademark “eTutor” would cause confusion with its “TutorABC” trademarks

On June 1, 2023, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) overturned determination previously made by Taiwan’s IP Office, finding the trademark “e Tutor” registered by the language learning institute Jeda would cause confusion with TutorABC Inc.’s famous trademarks “TutorABC” (Reg. No. 01281166, 01278886, 01636300, and 01278887), “TutorABC.com” (Reg. No. 01636299), “TutorABCjr” (Reg. No. 01467561), and “TutorMing” (Reg. No. 01355089).

Jeda’s contested trademark, “e Tutor” (Reg. No. 01758049), was filed on June 9, 2015, and granted on March 1, 2016, designated for use in services under class 41, including educational service, training service, vocational training, vocational counselling, consulting service, etc. TutorABC Inc. filed invalidation action on July 7, 2016, citing violation of Trademark Act.

On October 31, 2018, Taiwan’s IP Office (“TIPO”) found in Jeda’s favor, determining that due to the dissimilarity between “e Tutor” and TutorABC Inc.’s aforesaid trademarks, the aforementioned Trademark Act should not be applicable. TIPO agreed that TutorABC Inc.’s trademarks are famous trademarks, and that both parties’ trademarks are applied for use in similar educational services. However, TIPO was of the view that although both Jeda’s and TutorABC Inc.’s trademarks feature “tutor”, ordinary consumers still would not consider them similar with each other. More specifically, in Jeda’s “e Tutor”, the letter “e” is much bigger than the ordinary word “tutor”, and there is another ornamental cloud presented, which, when taking as a whole, could render Jeda’s contested trademark dissimilar with TutorABC Inc.’s cited trademarks.

 

TutorABC Inc. challenged TIPO’s determination in the IPC Court. In the first round, The IPC Court sided with TIPO, finding TutorABC Inc.’s similarity analysis flawed in that TutorABC Inc. inappropriately focused on the common word “tutor” shared by Jeda’s and its cited trademarks, while ignoring all the other presented elements. TutorABC Inc. appealed, and the Supreme Administrative Court (“SAC”) vacated IPC Court’s first ruling on October 27, 2022, determining that while there are variations in Jeda’s and TutorABC Inc.’s cited trademarks, the main impression formed in the consumers’ minds after seeing both parties’ trademarks would still be “tutor”. As such, the SAC posited that “e Tutor” should still be found similar with TutorABC Inc.’s aforesaid trademarks. The case was subsequently remanded back to the IPC Court for further handling in accordance with SAC’s instruction.

 

In its second ruling on June 1, 2023, the IPC Court sided with TutorABC Inc. This time, the IPC Court found TIPO’s determination erroneous.

1.      Although “tutor” is a word with ordinary meaning, such a word may still be distinctive. To this end, the IPC Court affirmed that both Jeda’s and TutorABC Inc.’s trademarks possess distinctiveness, and that TutorABC Inc.’s aforesaid trademarks have achieved the status of well-known trademarks.

2.      As to similarity analysis, the IPC Court followed the path directed by the SAC, considering “tutor” the dominant portion of Jeda’s contested trademark, which would be considered similar with TutorABC Inc.’s aforesaid famous trademarks by ordinary consumers.

3.      Given that TutorABC Inc.’s above trademarks are famous, that both Jeda and TutorABC Inc. provide similar language educational service, and that “e Tutor” is similar with “TutorABC”, the IPC Court concluded that Jeda’s contested trademark should be invalidated due to the likelihood of confusion caused by its similarity with TutorABC Inc.’s famous trademarks.

 

 

Source: 2023 Shin-Shang-Gan-Yi-No. 1 (IPC Court)

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,111%2c%e8%a1%8c%e5%95%86%e6%9b%b4%e4%b8%80%2c1%2c20230601%2c1

Fashion Giant LV Scores a Win for its famous trademark in opposition against “LN”

In an opposition proceeding initiated by Louis Vuitton Malletier (“LVM”), Taiwan’s IP Office (“TIPO”) found in LVM’s favor, canceling the trademark registration of “LN” for its similarity with the fashion giant’s famous brand “LV”.

 

The opposition was filed by LVM based on its famous trademark “LV” (See below). According to LVM, the registration of “LN” violates Article 30.1.11 of Trademark Act, which provides that a mark shall not be registered if such a mark is identical with or similar to another’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or harm to the reputation of the well-known trademark.

The contested trademark, “LN” (Reg. No. 02218417, see below), was filed by Lion Technology Co. Ltd. on July 16, 2021, and granted on May 1, 2022, designated for use in goods under class 11, including products such as water supplier, water purifier, water cleaning device, water sterilizer, electrolytic water generator, water purification, etc. LVM filed opposition against “LN” on July 25, 2022.

 On June 14, 2023, TIPO sided with LVM, finding that:

 

1.     Based on TIPO’s prior findings, LVM’s asserted trademarks “LV” indeed have been profoundly used by LVM on various kinds of products, including purses, watches, fashionable accessories, apparel, etc., and are well-recognized among the relevant consumers. As such, TIPO affirmed that LVM’s cited trademarks are “well-known” at the time when the contested trademark “LN” was filed for registration in 2021.

2.     TIPO also noted that the contested “LN” trademark composed of two partially overlapping English letters “L” and “N”, which demonstrates similar style and patter presented in LVM’s cited trademark. Although “LN” ends with “N” and “LV” ends with “V”, TIPO considers such difference minor. As such, “LN” is considered visually and conceptually similar with “LV”.

3.     As to the strength of trademark, TIPO again found this factor tilted to LVM’s favor. “LV” is not only a highly distinctive trademark, but has also been used on various kinds of products, including apparel, jewelry, detergents, bleaches, etc. Thus, TIPO is of the view that LVM’s aforesaid famous trademark has been applied for use in diverse products and services, and is likely to be used on products that are similar with or related to products designated by the contested trademark.

4.     In view of the above, since 1) LVM’s trademark is highly distinctive and famous among the relevant public; 2) the contested trademark “LN” is similar with “LV”; 3) the famous trademark “LV” has been used on numerous products that are commonly used in consumers’ daily lives, which are similar with or related to the products designated by the contested trademark “LN”, TIPO determines that the registration of “LN” may cause confusion with LVM’s famous trademark. 

 

In conclusion, the registration of “LN” is canceled by TIPO in accordance with Article 30.1.11 of Trademark Act. 

 

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4L3ZFN1RRT1drV25weE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

DAINESE prevailed in trademark opposition for its “TCX” trademark

In its determination made on May 30, 2023, Taiwan’s IP Office (“TIPO”) sided with Italian prominent brand DAINESE S.P.A. (“DAINESE”), finding DAINESE’s registered “TCX” trademark (see below) will be confused due to registration of “TCXX” trademark.

The contested trademark, “TCXX” (see below), was filed on February 7, 2021, and granted on August 1, 2021 (Reg. No. 02158378), designated for use in goods under class 25, including socks, boots, shirts, sweaters, pants, jackets, etc. DAINESE filed opposition on November 1, 2021, alleging that registration of “TCXX” violates Article 30.1.10, Article 30.1.11, and Article 30.1.12 of Trademark Act.

 

TIPO found in DAINESE’s favor on May 30, 2023, determining that the registration of “TCXX” should be canceled according to Article 30.1.10 of Trademark Act.

 

1.    Article 30.1.10 of Trademark Act provides that a mark should not be registered if such a mark is identical with or similar to other’s registered trademark; is applied for use in goods or services that are identical with or similar to those for which other’s registered trademark is applied; and hence there exists likelihood of confusion among the relevant consumers.

2.    As to similarity, TIPO noted that although DANIESE’s “TCX” is stylized and has different font size, ordinary consumers could still easily identify it as word consisting of “T”, “C”, and “X”, which is visually and conceptually similar with the contested trademark “TCXX”. The degree of similarity is very high.

3.    TIPO further noted that DAINESE’s “TCX” is designated for use in similar goods, such as slippers, sneakers, sportswear, coats, jackets, etc., which are products that could keep warm and be used in combination with other apparel and related accessories. Thus, TIPO considered both “TCX” and “TCXX” trademarks are applied for use in similar goods.

4.    Based on the records, DENIESE’s “TCX” is distinctive, has been registered in Taiwan since 2007, and is well-recognized among the relevant consumers through DENIESE’s continuous marketing and local distributorship. Since there is no record submitted to support the use of “TCXX”, TIPO found consumers should be more familiar with DENIESE’s “TCX”. 

5.    Given that ”TCXX” is highly similar with “TCX”, that both trademarks are applied for use in similar goods, that “TCX” is distinctive and that consumers are more familiar with “TCX”, TIPO concluded that registration of “TCXX” may cause confusion with DENIESE’s registered “TCX” among the relevant consumers. The registration of “TCXX” is therefore canceled in view of Article 30.1.10 of Trademark Act accordingly. 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Rk94aXpSclN1MDQ0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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