Taiwan's IP Office did not find for "Superdry" in its trademark opposition against "Super+"

On July 10, 2024, Taiwan’s IP Office (“TIPO”) made a determination in favor of Gi-Co-Li Digital Marketing Co. Ltd. (”GCL”), finding GCL’s trademark “Super+” will not cause confusion with the famous apparel brand “Superdry” (no. 01472219, 01220154, 02055161, 02117209, and 01724579, all see below).

The contested trademark, no. 02249702 (see below), was filed by GCL on October 14, 2021, and granted on September 16, 2022, designated for use in goods under class 18, including various kinds of umbrella. On December 15, 2022, the then registrant of the aforesaid “Superdry” trademarks, DKH RETAIL LIMITED (“DKH”), filed opposition against GCL on grounds of Article 30.1.10, 30.1.11 and 30.1.12 of Trademark Act, alleging the registration of “Super+” will cause confusion with DKH’s famous “Superdry” trademarks among the relevant consumers.  

TIPO did not find for DKH in its determination on July 10, 2024:

1.    Based on the evidence of use submitted by DKH, including the news reports by ELLE, ET Today, records of sale in stores like outlets, department stores, and malls, and photos of stores established in Taiwan, TIPO confirmed that “Superdry 極度乾燥 （しなさい）” (no. 01472219) and “SUPERDRY” (no. 01220154) have achieved the status of well-known trademark.

2.    Nevertheless, TIPO found the similarity between GCL’s “Super+” and DKH’s cited trademarks is low. While all trademarks start with “Super”, DKH’s cited trademarks are followed by other various kinds of patterns, designs, or characters of other foreign languages. In addition, “Super+” also features a drawing of an umbrella, which further the visual difference. Taking all the elements into consideration, TIPO posited that the degree of similarity between “Super+” and the aforesaid “Superdry” trademarks is low.

3.    TIPO noted that DKH’s cited “Superdry” trademarks are also applied for use in similar umbrella products, which provide the same function for shelter from sun or rain. Meanwhile, consumers are more familiar with DKH’s “Superdry” trademarks due to its continuous use and marketing. However, TIPO also found the word “Super” has been used by others’ registered trademarks in similar umbrella products, such as “Super Bee” (no. 01100004), “SUPER TRAVELLER” (no. 01292638), and “Super” (no. 01128021). Hence, the use of “Super” as a trademark is less unique and its exclusivity would be narrower. Accordingly, consumers should be able to discern “Super+” from “Superdry”, and GCL’s “Super+” would be less likely to cause damage to the reputation and distinctiveness of DKH’s above cited “Superdry” trademarks.

4.    In view of the above, although “Superdry” is well-known and “Super+” was applied for use in similar umbrella products, the degree of similarity between “Super+” and “Superdry” is too low that ordinary consumers should be able to distinguish the two trademarks. Further, given the similarity between “Super+” and “Superdry” is low, TIPO was not convinced that GCL filed application with intent to imitate “Superdry”, and that registration of “Super+” would damage the reputation of “Superdry”.

DKH’s opposition is therefore denied by TIPO accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4d05ZZ0dYYTQxY0t4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Article 30 of Trademark Act:

A mark shall not be registered if such a mark is:

……..

(10)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, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper (30.1.10);
(11)Being 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, unless the proprietor of the said well-known trademark or mark consents to the application (30.1.11);
(12)Being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application (30.1.12).

Nike scored a win in trademark opposition for its “SNKRS” trademark

On June 26, 2024, Taiwan’s IP Office (“TIPO”) ruled in favor of Nike Innovate C.V. (“Nike”), finding the contested trademark “SNKRDUNK” confusingly similar with Nike’s trademark “SNKRS” (no. 01837088, see below), and thus should be canceled in accordance of Article 30.1.10 of Trademark Act.

The contested trademark, “SNKRDUNK” (no. 02282820, see below), was filed by Soda Inc. (“Soda”) on July 19, 2022, and granted on March 1, 2023, designated for use in goods under class 9, including downloadable computer program, downloadable computer application software, downloadable music file, electronic publications, downloadable mobile graphics, etc. Nike filed trademark opposition on May 30, 2023, alleging violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Nike for the following reasons:

1.    Article 30.1.10 of Trademark Act 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.    In terms of similarity, the contested trademark and Nike’s cited trademark both share the same initial characters “S”, “N”, “K”, and “R”. While there is additional letter “S” in Nike’s trademark, such difference is minor and insufficient to make Soda’s “SNKRDUNK” as a whole visually or verbally distinguishable from Nike’s “SNKRS”. In sum, Soda’s “SNKRDUNK” is similar with Nike’s “SNKRS”.

3.    Soda argued that Nike’s cited trademark is designated for use in software application for smartphones and mobile devices, computer software for social networking, etc., which are different from the use designated by Soda’s contested trademark. TIPO disagreed, and found those products are all related to computer software, and may serve similar or overlapping functions for consumers. Accordingly, if similar trademarks are used on these products, ordinary consumers are inclined to find these products probably are originated from the same or related suppliers.

4.    Further, according to the evidence of trademark use, including the “SNKRS” app (available on Google Play and App Store) used by Nike in selling its sportwear, webpages, and news reports like Hypebeast, TIPO is convinced that since as early as 2015, Nike has been using “SNKRS” in marketing and selling its sportwear and footwear. Since Soda did not submit the corresponding evidence of actual trademark use, TIPO finds Nike’s “SNKRS” more famous among the relevant consumers.

5.    In view of the above, considering the facts that “SNKRDUNK” is similar with “SNKRS”, that both trademarks are used in products that are related to computer software or applications, and that Nike’s “SNKRS” is distinctive with which ordinary consumers are more familiar with, TIPO reaches the conclusion that Soda’s “SNKRDUNK” may cause confusion with Nike’s “SNKRS” in the relevant consumers. Therefore, TIPO determines that Soda’s “SNKRDUNK” should be canceled in view of Article 30.1.10 of Trademark Act.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YlMzNzhQL2Yvc2xGelhPS083bFlhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fashion brand “CHOO” secured another win over PPB Studios’ “CHUU PPB STUDIOS”

On June 27, 2024, J. CHOO LIMITED (“JC”), the registrant of trademark no. 02341750, 01661633, 01888397, 01744963, and 02003379 (see below), prevailed in trademark opposition against PPB STUDIOS CO., LTD. (“PPB”), convincing Taiwan’s IP Office (“TIPO”) that PPB’s trademark “CHUU PPB STUDIOS” may cause confusion with JC’s above cited famous trademarks.

PPB’s contested trademark, “CHUU PPB STUDIOS” (no .02326032, see below), was filed on January 30, 2023, and granted on October 1, 2023, designated for use in services under class 35, such as information service for consumers to choose goods and services, online shopping, retail and wholesale service for clothing, accessories, and bags, etc. JC filed opposition on December 22, 2023, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sides with JC in its determination rendered on June 27, 2024:

1.      Per Article 30.1.10 of 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.”

2.      The initial word of PPB’s contested trademark “CHUU PPB STUDIOS” is “CHUU”, which constitutes the dominant portion of said trademark. Ordinary consumers would find “CHUU” similar with JC’s “CHOO”, as both share same letters “C” and “H”, and similar pronunciation and visual appearance. While there are additional “PPB” and “STUDIOS” presented in PPB’s contested trademark, such elements are not sufficient to create distinguishable differences. In the entirety, consumers will still view “CHUU PPB STUDIOS” similar with JC’s “CHOO”. The degree of similarity should be medium.

3.      Although PPB’s contested trademark is designated for use in various services for retail and wholesale, TIPO notes that these services may be used for retail and wholesale of products that JC’s “CHOO” is applied for use, such as bags, gloves, hats, purses, apparel, etc. In other words, the designated services of PPB’s trademark are associated with the services or products designated by JC’s trademarks, because both serve similar or relevant functions for satisfying consumers’ needs for purchasing clothing, bags, or accessories.

4.      As to the comparison of distinctiveness and fame between JC’s and PPB’s trademarks, TIPO finds these factors titled to JC’s favor. JC’s “CHOO” is highly distinctive, and has achieved profound popularity and recognizability via JC’s marketing and use worldwide. To the contrary, PPB has submitted no evidence of use regarding its contested trademark. Thus, TIPO opines consumers are more familiar with JC’s “CHOO”.

5.      In light of the above, considering that there is medium degree of similarity between “CHUU PPB STUDIOS” and “CHOO”, that “CHUU PPB STUDIOS” is designated for use in services that are associated with goods or services designated by JC’s “CHOO”, and that JC’s “CHOO” is more famous with which consumers are more familiar, TIPO concludes that PPB’s “CHUU PPB STUDIOS” may cause confusion with JC’s “CHOO”.

Hence, TIPO canceled the registration of PPB’s contested trademark accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WXpqSVVmYUJzYkZWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LV successful in its infringement lawsuit against bootleg restaurant

On June 28, 2024, Taiwan’s IP and Commercial Court (“IPC Court”) sided with French giant Louis Vuitton (“LV”), finding that the defendant, “Bootleg Creativity Co. Ltd.”, infringed LV’s famous trademarks (See below).

 

In the lawsuit, LV alleged that the interior design, decorations, merchandise, and items displayed in the defendant’s restaurant (see below), all feature LV’s iconic monogram and trademarks without its prior license. As such, defendant’s use shall constitute trademark infringement under Article 68 and 70 of Trademark Act.

The defendant explained that all the accused products were sourced from MF Production Co., a company that provides bootleg merchandise under its own brand “MF BY GCDC”. Defendant argued that customers should be able to distinguish the products, because these products are bootlegs that serve as parody of LV’s brand.

The IPC Court did not find for the defendant, reasoning that:

1.    To defend based on parody, defendant’s use has to meet the following requirements: 1) demonstrating nature of entertainment based on satire or parody, and in the meantime creating contradictory comparison;

2) upon seeing the parody, the consumers could immediately perceive of the referred trademark;

3) the consumers could clearly distinguish the parody use from the referred trademark without any likelihood of confusion;

4) the parody use is so necessary for the public interest that freedom of expression would outweigh the protection of trademark; and

5) there is no improper use that may harm the reputation or distinctiveness of the famous trademark.

2.    Based on the above framework, the IPC Court finds the defendant’s use does not meet the aforesaid requirements. The degree of similarity between the defendant’s use and LV’s famous trademarks is high, and, upon examining the products displayed in the defendant’s restaurant, the IPC Court notes LV’s trademarks are all placed in the most dominant portion. In other words, consumers could rarely notice the presence of “MF BY GCDC”, let alone form comparison between the defendant’s use and LV’s trademarks. Besides, except for the voluminous use of LV trademarks in its products, the defendant has provided no explanations whatsoever as to what exactly satirical or parodical message that its use intends to convey.

3.    Since defendant is not exempt from trademark infringement liability, and there is likelihood of confusion caused by the defendant due to the similarity between defendant’s use and LV’s famous trademarks, the IPC Court holds that LV is entitled to injunctive relief and monetary remedy.  

In conclusion, the IPC Court overrules the defendant’s parody defense, grants LV’s motion for injunction, and awards LV NT$ 1,375,431 for damages.    

 

Source:  Case no.: 112-Ming-Shang-Su-Zi No.7, IPC Court (https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,112%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c7%2c20240628%2c1) 

Note 1: MF Production Co. was also found infringing LV’s trademarks by the IPC Court earlier this year (See: 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))

Note 2:

Article 68 of Trademark Act

Infringement of registered trademark
Any of the following acts, without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1)Using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2)Using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3)Using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who, without the consent of the proprietor of a registered trademark, manufactures, sells, possesses, displays, exports, or imports labels, tags, packaging, containers, or service-related articles that bear trademarks the same or similar to said registered trademark of the identical or similar goods or services in the course of trade for their own use or for others, shall also be deemed an infringer of the right of such trademark.

Article 70 of Trademark Act

Acts deemed infringement
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1)Knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; or
(2)Knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.

 

UPS unable to cancel trademark “UPG” in its trademark opposition proceeding

On June 4, 2024, in a trademark opposition filed by UNITED PARCEL SERVICE OF AMERICA, INC. (“UPS”), Taiwan’s IP Office (“TIPO”) found there should be no confusion between the well-known trademark “UPS” (see below) and the contested trademark “UPG”, and therefore denied UPS’s opposition accordingly.

 

The contested trademark, “UPG” (no. 02226188, see below), was filed by Uni-President Enterprises Corp. (“Uni-President”) on December 6, 2021, and granted on June 1, 2022, designated for use in services under class 39, including, among the others, cargo packaging, cargo transportation, commodity express delivery, parcel delivery and express delivery, home delivery, cargo delivery, collection services for express delivery operators, mail delivery and express delivery, food transportation, etc. UPS filed trademark opposition against “UPG”, contending that the contested trademark is confusingly similar with its famous “UPS” trademarks.

TIPO did not side with UPS. In its determination, TIPO reasoned that:

1.      Based on the evidence presented by UPS, including the news reports and articles of BRANDZ, Forbes, The Independent, FT, and Brand Finance, throughout 2013 and 2017, the trademark “UPS” has been recognized as one of the most valuable brands around the globe. Besides, since1988, UPS has set up its branch office in Taiwan and started providing the delivery services to local consumers. As such, prior to the filing date of Uni-President’s “UPG”, the trademark “UPS” has achieved well-known status in the fields of mail and parcel delivery service.

2.      As to similarity, although both “UPS” and “UPG” share the same initial two letters “U” and “P”, their third letters are different. The difference between the “S” of “UPS” and “G” of “UPG” renders Uni-President’s contested trademark verbally, visually, and conceptually distinguishable from UPS’s trademark. Ordinary consumers will find the pronunciation and visual appearance of “UPG” different from those of “UPS”.

3.      As to the designated use of services, TIPO notes that while some of the services designated by Uni-President’s “UPG” are overlapping with those by UPS’s trademark, “UPG” is also used in other different areas like suitcase rental, vending machine replenishment. Thus, there is still difference in terms of the designated services between “UPS” and “UPG”.

4.      Although “UPS” is well-known, TIPO finds its use mainly concentrates on the area of delivery service, without evidence showing diversification of use in other categories. Thus, the scope of fame of “UPS” is limited to the areas related to parcel or mail delivery. Further, there is no evidence showing actual confusion or Uni-President’s bad faith when filing the application.

5.      In view of the above, even though “UPS” is a well-known trademark, given that the similarity between “UPS” and “UPG” is low, that the services designated by “UPG” are not totally similar with those by “UPS”, and that “UPG” and “UPS” each possess sufficient distinctiveness, TIPO opines ordinary consumers should be able to discern the difference between “UPG” and “UPS”. Hence, there should be no confusion caused among the relevant consumers, and the reputation and distinctiveness of “UPS” shall not be harmed due to the registration “UPG”.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4V2laWVI2SkkvY0VNNmtrRmxicVM5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP and Commercial Court affirmed TIPO’s finding, ruling “appleman” is confusingly similar with Apple Inc.’s famous trademark “APPLE”

On June 14, 2024, Taiwan’s IP and Commercial Court (“IPC Court”) affirmed the finding of Taiwan’s IP Office (“TIPO”) in a trademark opposition filed by Apple Inc., determining that the contested trademark “appleman” should be canceled in view of likelihood of confusion with Apple Inc.’s famous trademarks “APPLE” (no. 01457997 and no. 01591959, see below).

 

The contested trademark (no. 02138662, see below), was filed on June 29, 2020, and granted on May 1, 2021, designated for use in services under class 35, including internet auctioning, leasing services for internet advertising, etc. Apple Inc. filed opposition on July 30, 2021, alleging, specifically, violation of Article 30.1.11 of Trademark Act. TIPO found the contested trademark shall be canceled. The registrant of the contested trademark appealed to the Petition and Appeals Committee of the Ministry of Economic Affairs (“Committee”). The Committee rejected the appeal, and the registrant further challenged TIPO’s determination to the IPC Court.

The IPC Court affirmed the TIPO’s determination:

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.      Firstly, based on the evidence submitted by Apple Inc., including the records of registrations of trademarks, catalogues of products, news reports of Interbrand, Forbes, BrandZ, and sales records, the IPC Court agrees that the alleged “APPLE” trademarks are already well-known at the time when the contested trademark was filed.

3.      On similarity, the registrant argued that the contested trademark is actually the combination of “app” and “leman” (i.e., lover), so it should be different from Apple Inc.’s “APPLE”. The IPC Court disagreed. The IPC Court finds the design concept of a trademark is generally not accessible for ordinary consumers. When seeing the contested trademark, consumers would still consider “apple” as the dominant portion of the contested trademark, and therefore may develop the impression that the contested trademark is visually, orally, and conceptually similar with Apple Inc.’s famous trademarks.

4.      The IPC Court further notes that “APPLE” is highly distinctive and has been used in a variety of products and services, such as webinar, computer software, telecom services, retail for computer accessories, etc. Consumers are more familiar with Apple Inc.’s “APPLE”. Besides, these services, the IPC Court opines, are related to transmission of data or video via internet, and thus are similar to or associated with the nature of the services designated by the contested trademarks.

5.      In view of the above, since 1) the cited “APPLE” trademarks are distinctive and have been well-known; 2) there is similarity between “appleman” and “APPLE”, and 3) consumers are more familiar with “APPLE” in view of its diversification of use in products and services, the registration of the contested trademark indeed may cause confusion with Apple Inc.’s “APPLE” among the relevant consumers.

 

As a result, the IPC Court denied the registrant’s request to vacate the determination made by TIPO.

  

Source: 112 Shin-Shang-Su Zi No. 64 (IPC Court, 2024) 

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,112%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c64%2c20240614%2c2 

Justin Bieber’s apparel brand successful in canceling trademark that was filed with intent to imitate

On May 29, 2024, Taiwan’s IP Office (TIPO) canceled trademark no. 02336207 “Drew House” (see below), finding such trademark was filed with intent to imitate the apparel brand founded by the worldwide famous singer and producer Justin Bieber and his friends.

The contested trademark, “Drew House”, was filed on January 20, 2022, and granted on November 16, 2023, designated for use in services under class 35, including online auction, online market service for seller and buyer, broker service for second-hand goods, agent for import and export service, providing market information, etc. NSN APPAREL CO., LLC. (“NSN”), the company that holds the “DREW HOUSE” brand, filed opposition on February 16, 2024, alleging that the contested trademark should be canceled based on Article 30.1.12 of Trademark Act.

TIPO sided with NSN, finding that:

1.      Article 30.1.12 of Trademark Act provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration”.

2.      Based on evidence submitted by NSN, including the sales records on Shopify, news report, and webpages of NSN’s official website, TIPO is convinced that prior to the application date of the contested trademark, “DREW HOUSE” has been used by NSN as trademark on apparel, socks, and other services for selling on the internet.

3.      TIPO also finds that the designated services of the contested trademark is related to or associated with the goods or services in which NSN’s “DREW HOUSE” is applied for use. For example, both are used for internet services that meet the consumers’ demands for online purchase. Further, TIPO notes that the applicant of the contested trademark once filed the same mark designated for use in goods related to apparel. As such, TIPO determines that the applicant is engaged in similar business in clothing and apparel, which puts applicant in a position that renders it more familiar with others’ apparel brands, and thus is more likely to know the existence of “DREW HOUSE”.

4.      In view of the above, given that “DREW HOUSE” is unique and not commonly used by others as trademark, that the applicant of the contested trademark is engaged in similar business and should know the existence of NSN’s “DREW HOUSE”, and that the contested trademark filed by the applicant features the same letters as NSN’s “DREW HOUSE”, TIPO concludes that the high similarity between the contested trademark and NSN’s “DREW HOUSE” could hardly be considered as mere coincidence. TIPO therefore determines that the applicant filed the application with intent to imitate NSN’s “DREW HOUSE”, and that the registration of the contested trademark should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZWxWbTVqV0JES2M0bEEvMDUreVhhUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true