ASUSTEK’s “AniMe Matrix” found not similar with Warner Brother’s “MATRIX”

“Matrix” is a sci-fi action movie produced by Warner Brother in 1999. It grossed over more than hundreds of millions of dollars in the global box office. In 2003, its sequel “The Matrix: Reload” and treequel “The Matrix: Revolution” were released and similarly achieved commercial success worldwide. In 2002, Warner Brother obtained trademark registrations for “MATRIX”, “MATRIX RELOADED”, “ENTER THE MATRIX”, and “MATRIX: THE MOVIE” in Taiwan (Reg. No. 01067525, 01057388, 01060786, and 01060785).  

On January 9, 2020, Taiwan’s ASUSTEK Computer Incorporation (“ASUSTEK”) filed trademark application for its “AniMe Matrix”, and was granted on August 16, 2020 (no. 02078067, see below), designated for use in class 9, including recorded computer operating procedures, desktop, notebook, computer software, computer program, computer hardware, etc. Warner Brother filed opposition on November 13, 2020, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On July 31, 2024, Taiwan’s IP Office (“TIPO”) sided with ASUSTEK, finding no violation of the cited Trademark Act:

1.        In terms of similarity, although Warner Brother’s cited trademarks and ASUSTEK’s contested trademark all share the same word “Matrix/MATRIX”, TIPO find such similarity would not increase likelihood of confusion, because “Matrix” has commonly been used by others as part of trademark. As such, ordinary consumers would not solely use “Matrix” to identify the source of goods or services upon seeing trademarks that contain “Matrix”. Additionally, as the initial word of ASUSTEK’s trademark is noticeably different from that of Warner Brother’s, TIPO concluded that such difference should be sufficient for the consumers to distinguish ASUSTEK’s “AniMe Matrix” from Warner Brother’s cited trademarks. In sum, the degree of similarity between the contested trademark and Warner Brother’s cited trademarks is low.

2.        As to similarity between the designated products, TIPO noted that some of the designated products of Warner Brother’s cited trademarks cover goods such as computer game discs, computer program, computer game software, video games, etc., and are similar to or associated with those designated by ASUSTEK’s contested trademark.

3.        Warner Brother argued that its cited trademarks shall be well-known trademarks since they were used in the “Matrix” movie franchise, which were highly popular in Taiwan. However, TIPO found such statements insufficient, and opined that Warner Brother should provide more concrete evidence, such as sales of merchandise, invoices, advertisements, marketing materials, etc. Since Warner Brother has not been able to provide the requested evidence throughout the opposition proceeding, TIPO did not side with Warner Brother on this issue.

4.        As to the strength of the trademarks, TIPO found both ASUSTEK’s “AniMe Matrix” and Warner Brother’s cited “MATRIX” trademarks possess considerable distinctiveness.

5.        In view of the above, considering that there is no evidence proving Warner Brother’s cited “MATRIX” trademarks are well-known, that the similarity between ASUSTEK’s “AniMe Matrix” and Warner Brother’s cited “MATRIX” trademarks is low, that both possess distinctiveness, and that there is no evidence showing actual confusion, TIPO opines that registration of the contested trademark will neither cause confusion with Warner Brother’s cited trademarks, nor will harm their distinctiveness or reputation. Hence, there should be no violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VFpPTWc2c28rSmd6dGhkVnFkUE43QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“NEAUVIA” found confusingly similar with “NIVEA”

 On July 23, 2024, Beiersdorf AG (“Beiersdorf”) prevailed in a trademark opposition against “NEAUVIA”, successfully convincing Taiwan’s IP Office (“TIPO”) that “NEAUVIA” may cause confusion with Beiersdorf’s well-known brand “NIVEA” (See below).

The contested trademark, “NEAUVIA” (no. 02191869, see below), was filed by MATEX Lab Switzerland SA (“MATEX”) on November 10, 2020, and granted on January 1, 2022, designated for use in various products under class 5, such as medical nutrition, protein nutritional supplements, chemical drug preparations, nutritional supplements, medical eye masks, medical preparations for hair care and skin treatment, etc. Beiersdorf filed opposition on April 1, 2022, alleging violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Beiersdorf in its determination based on Article 30.1.11 of Trademark Act, finding that:

1.        There is visual and verbal similarity between “NIVEA” and “NEAUVIA”, given that both start with “N” and end with “A”, and that both contain the same sequence of letters “N”, “V”, and “A”. Besides, the two trademarks both start with the same letter “N”, which tend to enhance the impression of similarity among ordinary consumers.

2.        TIPO notes that “NIVEA” is widely used in skin care products, and that “NEAUVIA” is used for products with medical purpose. However, TIPO considers the medical products designated by “NEAUVIA” is related to or associated with those by “NIVEA”, because skin care products like moisturizers, sunscreen, etc., are also relevant to the health, treatment, or beauty of skin. Further, it is usual for skin treatment medicine to be used in conjunction with skin lotion or sunscreen. As such, there is similarity or relevance between products designated by “NEAUVIA” and those by “NIVEA”.

3.        Based on prior cases and evidence of use, TIPO confirms that at the time when “NEAUVIA” is filed for trademark registration, “NIVEA” has already been well-known in the field of skin care products, and that consumers are more familiar with “NIVEA”.

4.        Considering that “NIVEA” is well-known and highly distinctive, that there is similarity between “NEAUVIA” and “NIVEA”, that the two trademarks are used in related or associated products that serve similar or related purposes, and that consumers are more familiar with “NIVEA”, TIPO concludes that there may be confusion caused among the relevant consumers. Therefore, “NEAUVIA” is canceled based on Article 30.1.11 of Trademark Act accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UXJpRi9iY0JzYjVXS2QvV3hrV3czdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Mayo Foundation successful in trademark opposition against Maywufa’s “INDIMAYO”

On July 31, 2024, Taiwan’s IP Office (“TIPO”) entered a decision in the favor of Mayo Foundation for Medical Education and Research (“Mayo Foundation”), finding registration of “INDIMAYO” may cause confusion with Mayo Foundation’s trademark “MAYO CLINIC” (no. 01797607 and no. 01799196, see below).

The contested trademark, “INDIMAYO” (no. 02306863, see below), was filed by Maywufa Co. Ltd. (“Maywufa”) on December 13, 2022, and granted on July 16, 2023, applied for use in goods under class 5, including drug for human use, nutrition supplements, medical shampoo, animal detergent, baby food, Chinese medicine, hair care, medical dietary supplements, etc. Mayo Foundation filed trademark opposition on October 13, 2023, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Mayo Foundation, determining that the contested trademark shall be canceled based on Article 30.1.10 of Trademark Act:

1.        TIPO first finds that both Maywufa’s “INDIMAYO” and Mayo Foundation’s “MAYO CLINIC” contain the word “MAYO”, which constitute the dominant portion of the respective trademarks. If “INDIMAYO” and “MAYO CLINIC” are used in the same or similar products or services, TIPO opines consumers may consider both trademarks represent the same supplier or affiliated business entities. Hence,Maywufa’s “INDIMAYO” is considered verbally, visually, and conceptually similar with Mayo Foundation’s above cited trademarks.

2.        As to the designated use of goods, TIPO finds Maywufa’s “INDIMAYO” is applied for use in goods such as drug for medical use, medical dietary supplements, medical shampoo, etc.; and Mayo Foundation’s “MAYO CLINIC” is applied for use in services such as health consultation, medical test, healthcare, and products such as diagnostic devices, medical devices, etc. While there is minor difference between the respective designated products and services, TIPO consider the products designated by Maywufa’s “INDIMAYO” related to or associated with those designated by Mayo Foundations’s “MAYO CLINIC”, because both serve similar function or purpose.

3.        Further, TIPO notes that Mayo Foundation’s “MAYO” is highly distinctive, and has been recognized as well-known trademark in previous TIPO’s determination. In other words, the relevant consumers are more familiar with Mayo Foundation’s “MAYO CLINIC” than Maywufa’s “INDIMAYO”.

4.        According to Article 30.1.10 of Trademark Act, 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 the relevant consumers”. Since there is similarity between “INDIMAYO” and “MAYO CLINIC”, both trademarks are applied for use in related or similar products or services, and consumers are more familiar with Mayo Foundation’s “MAYO CLINIC”, TIPO concludes that consumers may be confused in view of the similarity between Maywufa’s and Mayo Foundation’s trademarks.

As such, Maywufa’s “INDIMAYO” is canceled based on Article 30.1.10 accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VFpPTWc2c28rSmhhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

POLO handed a partial win in its opposition against trademark “Huang-RL”

On June 28, 2024, Taiwan’s IP Office (“TIPO”) awarded the POLO/LAUREN COMPANY L.P. (“POLO”) a partial win in POLO’s trademark opposition against registered trademark “HUANG-RL”. In its determination, TIPO found for POLO by affirming that POLO’s trademarks “POLO JEANS CO RL RALPH LAUREN Flag Design” and “DOUBLE RL” (no. 00977603 and no. 02087671, hereafter “RL” trademarks, see below) may be confused in the category of clothing products due to the similarity of the contested trademark. 

However, TIPO denied POLO’s opposition based on its” POLO BY RALPH LAUREN”, “RALPH LAUREN”, and “RALPH LAUREN (Stylized)” trademarks (no. 00068357, no. 00069729, and no. 01420134, hereafter “RALPH LAUREN” trademarks, all see below), finding there should be no confusion caused.

The contested trademark, “Huang-RL” (no. 2303334, see below),was filed on September 5, 2022, and granted on June 16, 2023, designated for use in goods under class 25 (including children’s clothing, men’s and women’s clothing, coats, shirts, shoes, scarves, socks, etc.) and services under class 35 (including advertising, TV commercials, online advertising, internet marketing, online shopping, etc.) POLO filed opposition on September 15, 2023, alleging that registration of the contested trademark will cause confusion with POLO’s aforesaid “RL” and “RALPH LAUREN” trademarks.

TIPO partially agreed with POLO, finding that:

1.    In terms of similarity, POLO’s “RL” trademarks and the contested trademark all contain “RL”. Additionally, TIPO noted that in the contested trademark, the letters “R” and “L” should be the elements that form the strongest impression among the consumers, because “Huang” is just ordinary last name that is commonly used in Taiwan. Consumers’ attention would be attracted to “RL” upon seeing the contested trademark. As such, TIPO considered there should be medium degree of similarity between POLO’s “RL” trademarks and the contested trademark. However, TIPO found the similarity between POLO’s “RALPH LAUREN” trademarks and the contested trademark is quite low. The number of the letters, the way and the pattern the letters are arranged, and the pronunciation are all different.

2.    As to similarity between the designated products and services, TIPO found that for products under class 25, the contested trademark indeed may raise confusion among the relevant consumers, because POLO’s aforesaid “RL” trademarks are also applied for use on various kinds of apparel and accessories. However, POLO’s “RL” trademarks are not used for similar services. Although TIPO agreed that POLO’s “RALPH LAUREN” trademarks are used for similar advertising and transactional services, these trademarks are not similar with the contested trademark.

3.    In view of the above, given that the contested trademark is similar with POLO’s “RL” trademarks, and that both are distinctive and applied for use in similar clothing products, TIPO concluded that registration of the contested trademark for use in similar products may cause confusion with POLO’s “RL” trademarks. Nonetheless, for services under class 35, since the similarity between POLO’s “RALPH LAUREN” trademarks and the contested trademark is low, TIPO opined there should be no likelihood of confusion.

4.    While POLO further argued that its cited trademarks are famous and the contested trademark is filed based on intent to imitate POLO’s famous trademarks, TIPO found POLO’s statements lack supporting evidence. The evidentiary materials submitted by POLO for proving the status of well-known were all related to POLO’s other “POLO Player” trademarks, which are less relevant to the fame of POLO’s aforesaid cited trademarks. Besides, POLO also failed to raise any evidence showing the filing of the contested trademark was based on bad faith. Hence, TIPO could not find for POLO.

In conclusion, the contested trademark’s registration for products under class 25 is canceled due to similarity with POLO’s “RL” trademarks. As to services under class 35, TIPO found no likelihood of confusion, and denied POLO’s opposition accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WnRkRW94S2dQSTVxekx0eGxvMWs5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true    

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