German lighting brand OSRAM successful in trademark opposition against Etron’s “USRAM” trademark

On October 4, 2023, Taiwan’s IP Office (“TIPO”) canceled trademark “USRAM” in view of similarity with OSRAM GMBH’s (“OG”) well-known trademark “OSRAM” (no. 01270503 and 01172285, see below).

 

The contested trademark, “USRAM” (no. 02227904, see below), was filed by Etron Technology Inc. (“Etron”) on December 8, 2021, and granted on June 16, 2022, designated for use in goods under class 9, including computer, random access memory, face recognition device, microchip, portable flash memory, wafer, semiconductor device, integrated circuit board, microcircuit, etc. OG filed opposition on August 30, 2022, alleging that registration of Etron’s “USRAM” violates Article 30.1.10 and 30.1.11 of Trademark Act.

 

In its determination rendered on October 4, 2023, TIPO sided with OG, finding registration of “USRAM” violates 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.    On the status of well-known trademark, TIPO finds in OG’s favor in view of the brand’s long history, its continuous sale and marketing in Taiwan, and TIPO’s prior determination made in 2014 finding “OSRAM” a famous trademark among the relevant consumers. Based on the profound and continuous use of “OSRAM”, TIPO affirms that at the time Etron filed its application for “USRAM”, OG’s “OSRAM” is a well-known trademark among the relevant consumers in Taiwan.

3.    In terms of similarity, TIPO posits that Etron’s “USRAM” is similar with OG’s “OSRAM” for both trademarks end with the same English letters “SRAM”. The difference created by the initial letters (“U” v. “O”) is minor, because the shape of “U” is somewhat similar with “O”. As such, TIPO considers Etron’s “USRAM” visually and orally similar with OG’s “OSRAM”.

4.    Further, TIPO finds OG’s “OSRAM” more famous and distinctive among the relevant public, as “OSRAM” as a lighting brand has been registered and used as trademark since as early as 1962 in Taiwan. To the contrary, there is no evidence of trademark use submitted by Etron to support its distinctiveness and recognizability. Thus, TIPO concludes that consumers are more familiar with OG’s “OSRAM” than Etron’s “USRAM”.

5.    In view of the above, given that Etron’s “USRAM” is similar with OG’s “OSRAM”, that OG’s “OSRAM” is more distinctive and well-known among the relevant public, and that OG has expanded its brand territory from lighting solution to optical semiconductor products, TIPO determines that registration of Etron’s “USRAM” may cause confusion with OG’s famous trademark “OSRAM.” Hence, Etron’s “USRAM” is canceled accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTFpWkt5Nmt4NnV0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“LV” prevails in trademark opposition against “LY”

In its determination rendered on September 28, 2023, Taiwan’s IP Office (“TIPO”) sided with fashion giant LOUIS VUITTON MALLETIER (“LOUIS VUITTON”), finding registration of trademark “LY” should be canceled due to its similarity with LOUIS VUITTON’s famous trademark “LV”.

 

According to Article 30.1.11 of Trademark Act, 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.

 

Based on the evidence submitted by LOUIS VUITTON, including the marketing materials, media exposures, news reports, and prior court decisions, TIPO affirmed that LOUIS VUITTON’s trademark “LV” (No. 01922370, see below) has obtained the status of well-known trademark in the field of perfume, watches, bags, accessories, jewelry, etc.

 

On similarity, TIPO noted that the contested trademark “LY” (no. 02222609, see below) demonstrates similar pattern as LOUIS VUITTON’s trademark “LV”. Both feature one English letter at the top and another English letter at the bottom, with overlapping portion in the middle. Additionally, both trademarks have the same letter “L”, and the “Y” in “LY” is somehow visually similar with the “V” in “LV”. TIPO hence considered both trademarks visually similar with each other.

 

Further, TIPO noted that “LY” is designated for use in services like online shopping, department store, TV shopping, retail and wholesale services for cosmetics, etc. These services are related to the products in which LOUIS VUITTON’s “LV” is used.

 

Given that LOUIS VUITTON’s “LV” has become well-known and is highly distinctive, that the contested trademark “LY” is similar with “LV”, and that “LY” is applied for use in services that are related to the products in which “LV” is used, TIPO concludes that registration of “LY” may raise confusion among consumers with LOUIS VUITTON’s famous trademark “LV”. As such, the contested trademark “LY” is canceled accordingly.    

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Qi9sa0tDbTc5Q2RTekNCSG5BcTdKZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Jaguar’s opposition against “DISCOVERY JUNIOR” falls short

On September 12, 2023, Taiwan’s IP Office (“TIPO”) denied opposition filed by JAGUAR LAND ROVER LIMITED (“JAGUAR”), finding JAGUAR’s trademarks “DISCOVERY” (reg. no. 01755441 and no. 01728494, see below) would not be confused by the registration of “DISCOVERY JUNIOR”, the contested trademark held by DISCOVERY KIDS ENTERTAINMENT LIMITED (“DISCOVERY KIDS”), a subsidiary of DISCOVERY COMMUNICATIONS, LLC.

The contested trademark, “DISCOVERY JUNIOR” (reg. no. 02171192, see below), was filed on September 23, 2020, and granted on September 16, 2021, designated for use in various kinds of goods and services under class 9 (such as camera, downloadable visual files, smart watch, smart glasses, downloadable mobile applications, robot with artificial intelligence, etc.), class 25 (such as apparel, costumes, socks, scarfs, shoes, etc.), class 28 (such as toy figures, puzzles, DIY toy sets, dolls, etc.) , and class 41 (such as educational service, educational information, book publishing, film production, etc.) JAGUAR filed opposition against the registration of “DISCOVERY JUNIOR” on December 10, 2021, alleging that the registration of “DISCOVERY JUNIOR” for class 28 violates Article 30.1.10 and 30.1.11 of Trademark Act.

 

 In its determination entered on September 12, 2023, TIPO sided with DISCOVERY KIDS:

1.      According to Trademark Act, 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 (Article 30.1.10). Additionally, a mark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark, 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 (Article 30.1.11).

2.      “Discovery” is a word with ordinary meaning, and records show that it has been registered as trademark by others in similar class of goods before the registration date of JAGUAR’s asserted trademark. Generally, TIPO considers both “DISCOVERY JUNIOR” and “DISCOVERY” distinctive and could be used as signs to identify the source of products or services provided.

3.      Based on the records of use of trademark, including the successful sales of JAGUAR’s “DISCOVERY” RV series, the continuous media exposure, the operation of HQ and service network in Taiwan, and the strong support from the community of “DISCOVERY” RV owners, TIPO confirms that JAGUAR’s “DISCOVERY” has become famous in the field of automobile products in Taiwan.

4.      On similarity, “DISCOVERY” is included in both “DISCOVERY” and “DISCOVERY JUNIOR”, but the word “DISCOVERY” is a common vocabulary with ordinary meaning, with which consumers are already familiar. Besides, the word “DISCOVERY JUNIOR” carries the meaning of “young explorer”, but “DISCOVERY” simply means “exploration”. The meanings of the two trademarks are thus noticeably different. Further, the visual appearance and pronunciation of the two trademarks are also different. TIPO opines the degree of similarity between “DISCOVERY” and “DISCOVERY JUNIOR” is, at most, medium.

5.      TIPO agrees that both “DISCOVERY” and “DISCOVERY JUNIOR” are applied for use on similar goods under class 28. However, TIPO found no records that could support the finding that JAGUAR’s “DISCOVERY” has been used and become famous in the field of toy products prior to the filing date of “DISCOVERY JUNIOR”. Plus, there is no evidence showing JAGUAR has used “DISCOVERY” in developing other product line. It is uncertain that in toy market consumers would be more familiar with JAGUAR’s “DISCOVERY” than DISCOVERY KIDS’ “DISCOVERY JUNIOR”  

6.      In view of the above, in terms of Article 30.1.10, TIPO concludes that although JAGUAR’s “DISCOVERY” and DISCOVERY KIDS’ “DISCOVERY JUNIOR” are applied for use in the same class of goods, consumers should be well-educated enough to discern JAGUAR’s “DISCOVERY” from DISCOVERY KIDS’ “DISCOVERY JUNIOR” because the word “DISCOVERY” has been commonly used by other registered trademarks in the same class of goods. Based on the visual, conceptual, and verbal differences, TIPO finds there should be no likelihood of confusion between JAGUAR’s “DISCOVERY” and DISCOVERY KIDS’ “DISCOVERY JUNIOR”.

7.      In terms of Article 30.1.11, TIPO opines that while JAGUAR’s “DISCOVERY” is famous in the field of automobile industry, there is no sign showing JAGUAR has put “DISCOVERY” in use on toy or other types of products. On the other hand, TIPO notes that evidence shows that “DISCOVERY” as trademark has been widely used by other companies, and there are various kinds of trademarks featuring “discovery” that have coexisted with each other across various types of products and services in Taiwan. Thus, consumers should be able to discern the source of goods and services when faced with trademarks featuring the word “discovery”. As JAGUAR produced no evidence proving DISCOVERY KIDs’ bad faith in mimicking JAGUAR’s famous trademark or actual confusion has been caused due to the registration of the contested trademark, TIPO determines that the registration of “DISCOVERY JUNIOR” will not dilute or harm the distinctiveness or reputation of JAGUAR’s “DISCOVERY” trademark.

 

Based on the reasons above, JAGUAR’s opposition against “DISCOVERY JUNIOR” is denied accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZTQ4aXVoNDRkVlV6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

DIOR prevailed in trademark opposition against “ADORER”

PARFUMS CHRISTIAN DIOR (“DIOR”), the registrant of Taiwan trademark “J'ADORE” (Reg. no. 00832697, see below), successfully convinced Taiwan’s IP Office (“TIPO”) that the registration of trademark “ADORER” should be canceled in accordance with Article 30.1.10 of Trademark Act.

 

The contested trademark, “ADORER” (Reg. no. 02198512), was filed by UNIKID INTERNATIONAL CO., LTD. (“UNIKID”) on August 16, 2021, and granted on February 1, 2022, designated for use in goods under class 3, including cosmetic products such as massage oil, skin care cosmetic, herbal essence, aromatic essential oil, etc. DIOR filed opposition on April 28, 2022, citing, among the others, violation of Article 30.1.10 of Trademark Act.

 

On August 25, 2023, TIPO sided with DIOR, finding registration of “ADORER” may cause confusion among the relevant consumers:

 

1.      Article 30.1.10 of Trademark Act:

This provision 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.      Visual and verbal similarity:

In this case, TIPO first notes that both “ADORER” and “J'ADORE” contain “ADORE”, so that there is visual similarity between the two trademarks. While DIOR’s “J'ADORE” starts with “J'”, which is different from the first letter of UNIKID’s “ADORER”, TIPO considers the pronunciation of “J'ADORE” similar with that of “ADORER”. When pronouncing, the stress would be on the word “ADORE”. Therefore, TIPO determines that DIOR’s “J’ADORE” and UNIKID’s “ADORER” are visually and verbally similar with each other.

3.      Similarity of designated products:

TIPO finds UNIKID’s “ADORER” is designated for cosmetic products like massage oil, essential oil, etc., which are similar with products designated by DIOR’s “J'ADORE”. For example, aside from perfume and fragrance, DIOR’s “J’ADORE” is also applied for use in essential oil. As such, TIPO is of the view that UNIKID’s “ADORER” is applied for use in goods that are similar with or related to products designated by DIOR’s “J'ADORE”.

4.      Well-known status of “J'ADORE”:

TIPO further finds that DIOR has submitted sufficient evidence showing the well-known status of “J'ADORE”, including news report, magazines, advertising, and the records of winning FIFI AWARD of Fragrance Foundation. Although “ADORER” is distinctive when being used in cosmetic product, TIPO finds evidence submitted by UNIKID insufficient to show that its “ADORER” is also well-known so that consumers are able to distinguish “ADORER” from DIOR’s “J’ADORE”. Consumers are more familiar with DIOR’s “J’ADORE”.

5.      Conclusion:

Given that UNIKID’s “ADORER” is similar with DIOR’s “J’ADORE”, that “ADORER” is designated for use in similar cosmetic products, that DIOR’s “J’ADORE” is well-known and consumers are more familiar with “J’ADORE”, TIPO concludes that registration of “ADORER” may cause confusion with DIOR’s “J’ADORE”. Hence, the registration of “ADORER” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SW9kWjFJdU80U2tQa3lsaTJEcDZ6QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“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