BENZ prevailed in trademark opposition for its iconic three-pointed star logo

On August 30, 2024, MERCEDES-BENZ GROUP AG (“BENZ”) scored a win in trademark opposition against ALPS Biotech Co. Ltd. (“ALPS”), convincing Taiwan’s IP Office (“TIPO”) that its famous star logos (No. 01766128 and 01535350, see below) may be confused by ALPS’s trademark.

 

The disputed trademark (no. 02237357, see below) was filed by ALPS on December 17, 2021, and granted on July 16, 2022, designated for use in various services under class 42, including chemical services, biological research, clinical trials, research and analysis for medical agent, product inspection and testing, etc. BENZ filed opposition on October 13, 2022, alleging violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO sided with BENZ on August 30, 2024 based on Article 30.1.10 of Trademark Act:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if 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.      On similarity, the disputed trademark consists of a white three-pronged logo within a black circle, and letters “ALPS” of small font. From the viewpoint of ordinary consumers, the dominant portion of the disputed trademark is the three-pronged white logo within the black circle, which is conceptually and visually similar with BENZ’s iconic three-pointed star trademark. While there are some differences in terms of shades, contour, and shape, such variations are considered minor.

3.      As to the designated services, TIPO notes that BENZ’s above cited trademarks are applied for use in services such as “quality inspection and testing for automobile, industrial analysis” (No. 01766128) and “materials analysis, chemical analysis, technical data analysis” (No. 01535350). These testing and analysis services provide functions that are related to or associated with those designated by ALPS’s disputed trademark.

4.      Further, BENZ’s three-pointed star logos are famous, and have been affirmed as well-known trademarks by TIPO. To the contrary, TIPO notes that there is little evidence submitted to prove the recognizability of ALPS’s disputed trademark.

5.      In view of the above, given that ALPS’s disputed trademark is similar with BENZ’s cited trademarks, that both trademarks are used for associated or related testing or analysis services, and that BENZ’s three-pointed star logos are already well-known and highly recognizable, TIPO concludes that registration of ALPS’s disputed trademark may cause confusion with BENZ’s well-known icons among the relevant consumers.  

 

The registration of ALPS’s disputed trademark is therefore canceled by TIPO according to Article 30.1.10 of Trademark Act.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bkpQOVNQK1ZMeG5DQ2RPN1JOb2gyUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

STUDIO GHIBLI successful in opposition proceeding for its famous “TOTORO” trademark

On July 31, 2024, Taiwan’s IP Office (“TIPO”) found in the favor of KABUSHIKI KAISHA STUDIO GHIBLI (“STUDIO GHIBLI”), the registrant of series of trademarks for the iconic movie character “TOTORO” (No. 00732869, No. 00734512, No. 00745288, No. 00745435, No. 00820100, No. 00882183, and No. 01483332, see below), determining that the contested trademark No. 02304914 shall be canceled due to its similarity with STUDIO GHIBLI’s famous trademarks.

 

The contested trademark, No. 02304914 (see below), was filed on October 21, 2022, and granted on July 1, 2023, designated for use in various kinds of pet products under class 31, such as pet food, pet drinks, animal food, cat mint, dog biscuit, fresh vegetables, etc. STUDIO GHIBLI filed trademark opposition on September 27, 2023, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO sided with STUDIO GHIBLI on the ground of Article 30.1.11, 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”.

2.      Here, TIPO notes that “TOTORO” is the famous character in STUDIO GHIBLI’s popular animation “My Neighbor Totoro”. The Japanese animation was first released in 1988 in Japan, and has established great popularity since then. Following its success in the box office, STUDIO GHIBLI also produced various kinds of merchandise and obtained registrations of trademarks based on the popular character “TOTORO”. Based on the evidence of sales records, marketing materials, movie awards, and exhibition activities, TIPO is of the view that STUDIO GHIBLI’s cited trademarks have been well-known among the relevant consumers when the application of the contested trademark was filed in 2022.

3.      As to similarity, although the contested trademark consists of word “JONSANTY” and a cartoon figure, TIPO finds the cartoon figure presented in the contested trademark is highly similar with STUDIO GHIBLI’s “TOTORO” trademarks. For example, both feature similar cat ears, circular eyes, circular body shape, and similar patterns on their chests. Therefore, the contested trademark is conceptually and visually similar with STUDIO GHIBLI’s “TOTORO” trademarks.

4.      Further, TIPO notes that STUDIO GHIBLI’s “TOTORO” trademarks are very unique, as most of the trademarks featuring similar cartoon figures are all owned by STUDIO GHIBLI. In other words, such cartoon figure has not been commonly adopted as trademarks by others. Upon seeing the “TOTORO” trademarks, there is strong inclination for the consumers to link the trademarks with STUDIO GHIBLI’s products or services. Moreover, due to the popularity of the animation, STUDIO GHIBLI’s “TOTORO” has established strong distinctiveness among the relevant consumers.

5.      In view of the above, given that STUDIO GHIBLI’s “TOTORO” trademarks are well-known, that such trademarks are unique and highly distinctive, and that there is similarity between the contested trademark and STUDIO GHIBLI’s cited trademarks, TIPO opines the registration of the contested trademark used for pet products may dilute the distinctiveness and uniqueness of STUDIO GHIBLI’s “TOTORO” trademarks. Thus, the registration of the contested trademark shall be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4czk0ZEhlcitFSXVQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

VOLKSWAGEN unable to canceled “微灣生技VWON” in trademark opposition proceeding

Taiwan’s IP Office (“TIPO”) denied VOLKSWAGEN ‘s trademark opposition on August 15, 2024, finding the contested trademark “微灣生技VWON” will not cause confusion with the auto giant’s cited trademarks “VW” and “VW (in circle)” (See below).

The contested trademark, “微灣生技VWON” (Reg. No. 02306692, see below), was filed for registration on December 9, 2022, and granted on July 16, 2023, designated for use in goods under class 3, including lotion, sunscreen oil, hair dye, shampoo, hair conditioner, facial cleanser, toothpaste, etc. VOLKSWAGEN filed opposition on October 16, 2023, alleging that the registration of the contested trademark was filed with intent to mimic (Article 30.1.12 of Trademark Act), and would cause confusion with its well-known “VW” trademarks. (Article 30.1.10 and 30.1.11 of Trademark Act)

TIPO did not side with VOLKSWAGEN. In its determination made on August 15, 2024, TIPO opined that:

1.      While there is voluminous evidence supporting the well-known status of VOLKSWAGEN’s “VW (in circle)” trademarks, there seems to be little evidence showing the word mark “VW” has been put in profound use by VOLKSWAGEN in Taiwan. In other words, the records submitted by VOLKSWAGEN is insufficient to show that its word mark “VW” has also been well-known at the time when the contested trademark was filed for registration.

2.      In terms of similarity, the contested trademark consists of English letters “VWON” and Chinese characters “微灣生技”, which makes it visually, verbally, and conceptually distinguishable from VOLKSWAGEN’s cited “VW” and “VW (in circle)” trademarks. When ordinary consumers see the contested trademark, it would be difficult to draw connection with VOLKSWAGEN’s above cited trademarks.

3.      TIPO further noted that VOLKSWAGEN’s above cited trademarks cover products under class 3, such as perfume, cosmetics, etc. These products are related to the goods designated by the contested trademark, because both are sold in similar sales channels, and serve related purposes or functions. Nonetheless, TIPO found there seems to be no evidence suggesting VOLKSWAGEN ever used the cited trademarks in the field of cosmetic products. As such, it is difficult to evaluate whether the relevant consumers in the cosmetic market would be more familiar with VOLKSWAGEN’s cited trademarks.

4.      In view of the above:

1)      With respect to Article 30.1.10 of Trademark Act, since the similarity between the contested trademark and VOLKSWAGEN’s cited trademarks is low, there is no evidence indicating VOLKSWAGEN’s trademarks are more recognizable in the cosmetic and beauty industry, there is no evidence showing actual confusion, and the contested trademark does possess certain degree of distinctiveness, TIPO concluded no confusion will be caused by the registration of the contested trademark.

2)      While VOLKSWAGEN’s “VW (in circle)” trademarks are well-known, such trademarks are not similar with the contested trademark. Moreover, there is no evidence showing the reputation or distinctiveness of VOLKSWAGEN’s cited trademarks will be harmed or diluted by the contested trademark. TIPO posited that registration of the contested trademark shall not violate Article 30.1.11 of Trademark Act.

3)      TIPO also noted that “VW” as a word mark has commonly been used by some enterprises as part of their registered trademarks for cosmetic products under class 3. Added to that, the degree of similarity between the contested trademark and VOLKSWAGEN’s cited trademarks is low. Therefore, the mere fact that the contested trademark also contains “VW” is insufficient to prove that the contested trademark is filed based on intent to mimic VOLKSWAGEN’s trademarks. Thus, there should be no violation of Article 30.1.12 of Trademark Act. 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4QTRqWDBkeWJiRXZjUVpuWFpQTWpkQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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