Booking and Agoda fined by Taiwan’s Fair Trade Commission for misusing paid search advertising

On April 29, 2024, Taiwan’s Fair Trade Commission (“FTC”) fined Booking.com and Agoda each NT$ 1,000,000 for their anti-competitive use of paid search advertising.

According to Article 25 of Fair Trade Act, no enterprise shall otherwise have any deceptive or obviously unfair conduct that is able to affect trading order. Based on FTC’s guideline, enterprise using other business’s trade name as internet search keyword to promote and increase the traffic of said enterprise’s website would constitute an “obviously unfair conduct” that may be subject to FTC’s administrative fine and injunctive order.

Per FTC’s records, Booking.com (between 2018.7 and 2022.12 ) and Agoda (between 2021.11 and 2022.12) engaged internet search service providers like Google and utilized its per-paid-click advertising function. Upon further investigation, FTC found Booking.com and Agoda both purchased “四方 通行”, the trade name of local travel agent Easytravel, as search keyword. Therefore, when consumers key in Easytravel’s trade name “四方通行” in Google’s search bar, advertisings of Booking.com and Agoda would appear at the top of the search result in parallel with the link leading to Easytravel’s own website. By utilizing such service, FTC opines Booking.com and Agoda may intercept consumers’ inquiries that could have been led to Eazytravel’s website, and harm Eazytravel’s potential business opportunities.

Thus, FTC concludes that Booking.com and Agoda have violated Article 25 of Fair Trade Act, and fines the two online booking service providers NT$ 1,000,000 each.

Source:

FTC’s ruling on Booking.com: https://www.ftc.gov.tw/uploadDecision/e99f45fe-5bee-4772-9384-b3acbcc99c7f.pdf

FTC’s ruling on Agoda: https://www.ftc.gov.tw/uploadDecision/37abb11e-a552-4ce1-9502-034058e53ac3.pdf

PILI’s trademark opposition based on the name of its iconic character “一頁書” falls short

When speaking of Taiwan’s glove puppet show (also known as “Bu-dai-xi”), what most Taiwanese would come to mind would be Pili Puppetry (“PILI”), the leading puppetry show in Taiwan. Throughout the past 30 years, PILI has created more than 80 series and introduced more than 4000 hero characters to fans all around the world, including the recent release on Netflix, PILI Fantasy, War of Dragons. Among the heroes, “一頁書” (transliteration: “Yi-Yeh-Shu”), is the most iconic and famous one (https://www.pili.com.tw/role-view/shu/). PILI also filed and acquired trademark registrations for such popular character, including no. 00977544 and no. 00162316 (see below).

 

On December 22, 2022, PILI filed opposition against trademark no. 02262794 (see below). The contested trademark was filed on January 13, 2022, and granted on November 16, 2022, designated for use in services under class 35, including advertising, marketing, auctioning, telephone marketing, SEO service, retail service for apparel accessories, etc.

PILI cited Article 30.1.11 of Trademark Act, and contended that the name of its character “一頁書” has become a well-known trademark, and the registration of the contested trademark would cause confusion. Unfortunately, Taiwan’s IP Office (“TIPO”) disagreed.

On April 10, 2024, TIPO found against PILI, reasoning that:

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”. Thus, to be applicable, PILI must first prove its “一頁書” is a well-known trademark.

2.      While there are significant amount of records and documents featuring PILI’s character “一頁書”, TIPO find most of them insufficient to support PILI’s contention that its “一頁書” has become a well-known trademark. The documents submitted by PILI are either not dated, or merely news reports or video clips covering the character itself. Without evidence of continuous and consistent use of “一頁書” as a trademark, TIPO does not consider “一頁書” has become a well-known trademark.

3.      Because PILI’s evidence could not show “一頁書” is a well-known trademark, TIPO finds Article 30.1.11 not applicable, even though the contested trademark is identical to the name of PILI’s popular character.

In view of the above, TIPO denies PILI’s opposition based on Article 30.1.11 of Trademark Act. The fact that “一頁書” is the name of a famous character does not necessarily mean it is well-known as a trademark.  

 

Source:

https://www.pili.com.tw/about-en.php

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cG0vK2pMeWlweE1XUFRCNXVXcXBTdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Levi Strauss Lost Its Trademark Opposition Against “YOCKERS”

On March 29, 2024, Taiwan’s IP Office (“TIPO”) found Levi Strauss & Co.’s (“LEVI”) “DOCKERS” not similar with the registered trademark “YOCKERS”.

The opposition was filed on July 13, 2022 by LEVI, the registrant of Taiwan’s trademark “DOCKERS” (No. 00397940, No. 00729011, and No. 00831617, see below), against “YOCKERS”, the trademark held by RED ANT SHOES CO., LTD.’s (Red Ant). LEVI cited violation of Article 30.1.10 of Trademark Act.  

Red Ant’s contested trademark, “YOCKERS” (No. 02215390, see below), was filed on October 20, 2021, and granted on April 16, 2022, designated for use in goods under class 25, including slipper, shoes, sandals, boots, pants, ties, raincoats, belts, etc. LEVI contended that Red Ant’s “YOCKERs” is confusingly similar with LEVI’s “DOCKERS”, and requested TIPO to cancel the contested trademark accordingly.

TIPO did not side with LEVI. In its determination made on March 29, 2024, TIPO found Red Ant’s “YOCKERS” not similar with LEVI’s “DOCKERS”:

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 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.      While both LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” share similar letters “OCKERS”, TIPO considers “YOCKERS” different from “DOCKERS”. Conceptually, “YOCKERS” has no specific definition in dictionary, but “DOCKERS” refers to “person who works at port.” Verbally and visually, the difference in the initial letters also renders the pronunciation and overall appearance of the two trademarks different from each other. As such, TIPO considers “DOCKERS” dissimilar with “YOCKERS”.

3.      TIPO notes that Red Ant’s “YOCKERS” is used in products that are similar with LEVI’s “DOCKERS”, and that both LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” are distinctive trademarks. However, based on the submitted records, TIPO finds there is no evidence showing consumers are more familiar with LEVI’s “DOCKERS” than Red Ant’s “YOCKERS”. Besides, there is no finding of actual confusion.

4.       Although Red Ant’s “YOCKERS” is used in products that are similar with LEVI’s “DOCKERS”, TIPO holds the view that consumers will not be confused, because LEVI’s “DOCKERS” and Red Ant’s “YOCKERS” are dissimilar, and both trademarks are distinctive with respect to the products which they are applied for use. As such, consumers should be able to distinguish products bearing Red Ant’s “YOCKERS” from products bearing LEVI’s “DOCKERS”.

In view of the above, LEVI’s opposition based on Article 30.1.10 of Trademark Act is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bEpzaVdyUit2b2RGelhPS083bFlhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s Intellectual Property and Commercial Court sided with LOUIS VUITTON in its infringement action against MF Production Co.

On March 27, 2024, Taiwan’s Intellectual Property and Commercial Court (“TIPC”) found for the French fashion giant LOUIS VUITTON MALLETIER (“LV”), finding products sold by MF Production Co. (“MF”) infringed upon LV’s well-known trademarks (see below).

The defendant, MF, is a company that provides retail service for apparel and accessories. According to LV, MF uses logos and patterns that are highly similar with LV’s trademarks, and thus should be held responsible for trademark infringement. MF argues that its use of similar logos and marks are all of parody use (see below), and should be exempted from trademark infringement. TIPC disagrees.

In its judgment, TIPC firstly finds that the logos and marks used by MF on its products are all highly similar with LV’s asserted trademarks. Additionally, since LV’s asserted trademarks are well-known and have been used in a variety of kinds of goods, it is likely that consumers will be confused and mistakenly believe that products offered by MF are originated from LV.

As to MF’s defense of parody use, the court holds that to successfully raise parody use as defense, defendant must show that its use “manifests that the products have no relationship with LV’s trademark”, and that “consumers could, upon seeing defendant’s products, immediately understand that the products aim to tease, ridicule, or mock LV’s trademark.” After examining MF’s accused products, the court concludes that MF’s use does not constitute parody, because LV’s trademarks are all placed in the central or most dominant position, and consumers could hardly notice the accused products are MF’s, not LV’s. Besides, the court could find no sense of teasing or mocking based on MF’s use. Therefore, MF’s defense based on parody fails, and the court rules that MF is liable for infringing LV’s famous trademarks. MF is subject to injunction, and shall compensate LV for damages roughly NT$ 6.6 million.

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c35%2c20240327%2c1 (111-Ming-Shang-Su-Zi No. 35, IPC Court)

Oral Care Giant Colgate Palmolive Successfully Fends Off Trademark Opposition Over Its “COLGATE KEEP”

On March 15, 2024, Taiwan’s IP Office (“TIPO”) rendered a determination in the favor of Colgate Palmolive Company (“Colgate”), finding Colgate’s registered trademark “COLGATE KEEP” (Reg. No. 02249801, see below ) would not cause confusion with the asserted trademark “keep keep”.

Colgate’s “COLGATE KEEP” was filed on January 18, 2022, and granted on September 16, 2022, designated for use in products like toothbrush. MEI CHI Enterprise Co. Ltd. (“MEI-CHI”), the registrant of the trademark “keep keep” (Reg. No. 01590217, see below), filed opposition against Colgate on November 29, 2022 , contending that registration of “COLGATE KEEP” will cause confusion with its “keep keep”, and thus has violated Article 30.1.10 of Trademark Act.

 TIPO sided with Colgate on March 15, 2024, finding that:

1.        Although both “COLGATE KEEP” and “keep keep” contain the same word “keep”, the initial word “COLGATE” in “COLGATE KEEP”, in TIPO’s opinion, carries specific weight. TIPO also notes that “COLGATE” has established great recognizability among the relevant consumers via Colgate’s longtime use and marketing, including series brands like “COLGATE ACTIBRUSH”, “COLGATE JUNIOR”, “COLGATE PRECISION”, etc. In contrast, TIPO notes that there are other registered trademarks ending with the word “keep” that are also used in similar personal hygiene or toothbrushes products. That is to say, in the relevant product field, consumers would pay more attention to the initial word “COLGATE”, and should be able to distinguish “COLGATE KEEP” from “keep keep” despite of the similarity over “keep”. As such, the overall similarity between “COLGATE KEEP” and “keep keep” should be low.

2.        TIPO finds both “COLGATE KEEP” and “keep keep” distinctive, because both trademarks are not related to the function or nature of the goods in which they are used. Further, TIPO notes that Colgate’s “COLGATE KEEP” is applied for use in toothbrush, which is identical to product that is designated by MEI CHI’s “keep keep”. Colgate’s “COLGATE KEEP” and MEI CHI’s “keep keep” are applied for use for the same product. The degree of similarity over the designated product is high.

3.        Even though MEI CHI has shown the distinctiveness of its “keep keep”, and the degree of similarity between the designated products, TIPO opines these factors are not enough to establish likelihood of confusion in light of the low degree of similarity between “COLGATE KEEP” and “keep keep”. Besides, there is no evidence of actual confusion. TIPO therefore concludes that consumers should be able to discern “COLGATE KEEP” and “keep keep”, and will not confuse MEI CHI’s “keep keep” with Colgate’s “COLGATE KEEP”.

Based on the reasons above, MEI CHI’s trademark opposition against Colgate is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bUt1Yjg4UTBBVzJQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

The Polo Lauren Company L.P. scored a win in trademark opposition for its famous polo player icon

In its determination rendered on February 29, 2024, Taiwan’s IP Office (“TIPO”) sided with fashion brand Polo Lauren Company (“PLC”), finding its iconic polo player trademarks (see below) may be confused due to registration of No. 02268824 trademark (the ‘824 trademark).

The ‘824 trademark (see below), was filed on March 22, 2022, and granted on December 16, 2022, designated for use in goods under class 25, including clothing, underwear, swimwear, socks, gloves, necktie, headscarves, hats, pantyhose, etc. PLC filed opposition on March 16, 2023, contending the registration of ‘824 trademark violates, among the others, Article 30.1.10 of Trademark Act.

TIPO found in PLC’s favor on February 29, 2024, reasoning that:

1.    Although the registrant of the’824 trademark argues that his trademark is actually featuring a horse rider holding a sword, TIPO opines such intention is not detectable when consumers view the ‘824 trademark. In fact, it is likely that consumers will only form the visual impressions that both PLC’s trademarks and the ‘824 trademark feature horse riders holding long objects. As such, TIPO considers ‘824 trademark visually and conceptually similar with PLC’s trademarks.

2.    Since ‘824 trademark is applied for use on products like apparel, clothing, and the related accessories, such products are similar with those designated by PLC’s trademarks. They serve similar function and meet similar need for consumers.

3.    Further, TIPO notes PLC’s trademarks have been used for a long time, and are recognized as well-known trademarks in a number of prior cases. Plus, there are more than 50 stores established in Taiwan marketing and selling PLC’s products. Therefore, TIPO posits that PLC’s trademarks are distinctive and consumers should be more familiar with PLC’s trademarks.

4.    In view of the above, considering the similarity between PLC’s trademarks and the ‘824 trademark, the similarity of products designated by ‘824 trademark and those designated by PLC’s trademarks, the distinctiveness of the PLC’s trademark, and consumer’s familiarity with PLC’s trademarks, TIPO agrees with PLC that registration of ‘824 trademark may cause confusion with PLC’s famous polo players trademarks. Therefore, ‘824 trademark is canceled by TIPO accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VEx5eTNxM0tQY2ZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

“ROCK 101” found similar with “Taipei 101”

On February 17, 2024, Taiwan’s IP Office (“TIPO”) sided with TAIPEI FINANCIAL CENTER CORP. (“TFC”) in its trademark opposition against “ROCK 101”, finding such trademark may be confused with TFC’s “Taipei 101” trademarks (See below).

The contested trademark, ROCK 101 (Reg. No. 02227032, see below), was filed by School of Rock, LLC (“SR”) on September 28, 2021, and granted on June 1, 2022, designated for use in goods under class 25 (cloths, apparel, shirt, sportswear, etc.) and services under class 41 (educational services, musical event, concert, live performance, seminar, recreational service, training and coaching services, etc.). TFC filed opposition action against SR on August 31, 2022, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

In its determination, TIPO finds “ROCK 101” should be subject to 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 1) being 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, since both “Taipei 101” and “ROCK 101” include the numbers “1”, “0”, and “1”, TIPO considers “101” would still be the part that draws the attention of ordinary consumers. As such, TIPO opines “ROCK 101”is verbally and visually similar with “Taipei 101”. The degree of similarity is medium.

3.    As to the designated use of goods and services, TIPO finds “Taipei 101” is also used in similar kind of services like retails service for clothing, musical performance event, opera and drama performance, and sport event. These services are similar with and related to the products and services designated by “ROCK 101”.

4.    Taipei 101 tower is the skyscraper owned by TFC, and has been known as Taipei’s landmark for a long time. Through TFC’s continuous efforts in marketing and promoting over the years, including its involvement in a variety of recreational, artistic, and sports events, “Taipei 101” is not just a name of an iconic building, but also acquires distinctiveness and becomes well-known in services such as department store, shopping, and financial services. As such, TIPO affirms “Taipei 101” has acquired distinctiveness, and consumers are more familiar with TFC’s “Taipei 101”.

5.    Based on the reasons that there is medium degree of similarity between “Taipei 101” and “ROCK 101”, that both trademarks are applied for use in similar products and services, that “Taipei 101” demonstrates strong acquired distinctiveness, and that consumers are probably more familiar with “Taipei 101” than “ROCK 101”, TIPO concludes there is likelihood that consumers may confuse “ROCK 101” with “Taipei 101”. As such, “ROCK 101” is found confusingly similar and should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4TFViVEEvRldoWW9RNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true