Hermès unsuccessful in its trademark opposition against “Birkin Creativity Marketing Service”

On April 30, 2024, Taiwan’s IP Office (“TIPO”) found the trademark “Birkin Creativity Marketing Service” not confusingly similar with Hermès’ iconic brand “BIRKIN” (see below), and denied Hermès’ opposition accordingly.

The contested trademark, “Birkin Creativity Marketing Service” (Reg. No. 02258305, see below) was filed by Birkin Creativity Marketing Service Co. Ltd. (“BCMS”) on January 7, 2022, and granted on October 16, 2022, designated for use in services under class 35 and 42, including services for trademark design, marketing project, advertising, advertisement design, TV commercials, catalogue design, etc. Hermes filed opposition on January 16, 2023, contending that registration of “Birkin Creativity Marketing Service” violates Article 30.1.11 of Trademark Act, because “Birkin Creativity Marketing Service” is confusingly similar with Hermès’ famous brand “BIRKIN”.

In its determination entered on April 30, 2024, TIPO found that:

1.        Although the contested trademark contains the same word “birkin”, in its entirety, the contested trademark creates different visual impression by combining the Chinese name of BCMS (i.e., “柏金創意整合行銷有限公司”) and other colorful patterns. As such, when seeing the contested trademark, consumers would find it visually and conceptually different from Hermès’ “BIRKIN”. The similarity between the contested trademark and “BIRKIN” is low.

2.        Besides, TIPO noted that “BIRKIN” is mainly used in products like handbag, purse, etc., but the contested trademark is used for services like trademark design and advertising. The designated services of the contested trademark are of different nature and serve for different purposes. TIPO is not convinced that registration of “Birkin Creativity Marketing Service” would necessarily damage the reputation or distinctiveness of Hermès’ “BIRKIN”.

3.        TIPO agrees that Hermes’ “BIRKIN” is well-known and highly distinctive in the field of handbag. However, given the facts that “Birkin Creativity Marketing Service” is not similar with “BIRKIN”, that it is used for services that are of different nature and function, and that both “Birkin Creativity Marketing Service” and “BIRKIN” are distinctive, TIPO concludes that there should be no confusion caused by the registration of BCMS’s “Birkin Creativity Marketing Service”.

Therefore, Hermès’ opposition against “Birkin Creativity Marketing Service” was rejected accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTIrcENtSEhNYlRweE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Appeals and Petitions Committee affirmed Valve’s win in its trademark opposition against “&TEAM”

On April 12, 2024, the Appeals and Petitions Committee of Ministry of Economic Affairs (“Committee”) affirmed the finding made by Taiwan’s IP Office (“TIPO”) in the trademark opposition between “STEAM” and “&TEAM”, concluding that registration of “&TEAM” for use in certain categories of the services under class 41 should be canceled due to likelihood of confusion with Valve’s “STEAM” trademarks (Reg. No. 01644559 and 02207353, see below).

The contested trademark, “&TEAM” (Reg. No. 02163446, see below), was filed by HYBE LABELS JAPAN INC. (“HYBE”) on December 24, 2020, and granted on August 16, 2021, designated for use in services under class 41, including, among the others, services for online non-downloadable game services, dance school education, photography, organizing competitions, organizing cultural, educational or educational magazine exhibitions, organizing educational competitions, organizing entertainment, sports and cultural activities, provides online game services for entertainment and education and learning (by computer network), provides online game services (by computer network), recording product production, etc.

Valve filed opposition on October 29, 2021, alleging violation of Article 30.1.10 and 30.1.11 of Trademark Act. TIPO entered its determination on October 27, 2023, siding with Valve, and finding “&TEAM” should be canceled according to Article 30.1.10 of Trademark Act. HYBE then appealed TIPO’s determination to the Committee.

The Committee affirmed TIPO’s determination based on the following reasons:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is: 1) 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.      HYBE contended that the difference of initial letters between “&TEAM” and “STEAM” renders the two trademarks different from each other. The Committee disagreed. The difference created by the “&” of “&TEAM” is too minor and thus is insufficient to make HYBE’s “&TEAM” distinguishable from Valve’s “STEAM”.

3.      As to the designated use of product and service, the Committee found Valve’s “STEAM” trademarks are used in products and services under class 9 and 41, including gaming software, downloadable gaming software, online gaming and entertainment service, and gaming and entertainment service provided via wireless connection, organizing cultural or sports activities, etc. These services, the Committee opined, are related to the services designated by HYBE’s “&TEAM”, because both related to products or services pertaining to computer software, entertainment, education, and activities organization.

4.      While the Committee agreed that both HYBE’s “&TEAM” and Valve’s “STEAM” are distinctive, there is no record to support a finding that consumers are highly familiar with “&TEAM” and could distinguish HYBE’s “&TEAM” from Valve’s “STEAM”. Rather, the evidence of trademark use submitted by Valve shows that consumers are more familiar with Valve’s “STEAM” than HYBE’s “&TEAM”.

In view of the above, considering the similarity between HYBE’s “&TEAM” and Valve’s “STEAM”, the fact that both HYBE’s “&TEAM” and Valve’s “STEAM” are used in services related to computer game and entertainment activities, and consumers’ familiarity toward Valve’s “STEAM”, the Committee opines registration of HYBE’s “&TEAM” is likely to cause confusion with Valve’s “STEAM” among the relevant consumers. Therefore, TIPO’s finding of violation of Article 30.1.10 is affirmed accordingly.

 

Source:

Committee’s determination: https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=G01100608&docDate=113/04/15&type=1&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

TIPO’s determination: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RUZQV0hTbkpRdit6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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