Apple successfully invalidated a trademark imitating its MagSafe ring

On August 27, 2024, Taiwan’s IP Office (“TIPO”) sided with tech giant Apple Inc. (“Apple”), canceling a trademark registration that imitated Apple’s iconic white ring used in its MagSafe technology.

In 2020, when announcing its wireless charging technology MagSafe, Apple also released smartphone case with a white ring that could guide users in placing their iPhones more accurately, ensuring optimal charging efficiency (See below).

                                                         

On February 15, 2023, a Taiwanese filed trademark application that features two circular rings (see below), designated for use in goods under class 9, including headphone, earbuds, wireless headsets, smartphone cases, mobile phone cases, charger, mobile phone charger, etc. The application was granted on November 1, 2023 (no. 02331397). Apple filed invalidation action on May 14, 2024, citing violations of Article 29.1.1 and Article 29.1.3 of Trademark Act.

                                                        

On August 27, 2024, TIPO found in Apple’s favor, determining that the disputed trademark shall be canceled on the ground of Article 29.1.1:

1.      Article 29.1.1 of Trademark Act provides that a trademark shall not be registered if it consists “exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services”.

2.      Here, based on the evidence submitted by Apple, including its 2020 press release for MagSafe, the photos of the iPhone products, smartphone cases, and wireless chargers on Apple’s website, and smartphone cases sold by other third-party vendors compatible with Apple’s MagSafe technology, TIPO noted that the white ring on the back of iPhone cases has been widely adopted to guide users to position their iPhones correctly for charging.

3.      Hence, TIPO was convinced that when seeing the disputed trademark used on the designated smartphone products, consumers would perceive it as a functional indicator showing where to place their smartphones to have optimal charging efficiency, rather than as a sign indicating the source of product or service. Consumers would view the mark as descriptive of the product’s function or characteristic.

4.      Given that the disputed trademark consists of purely descriptive elements and lacks distinctiveness, TIPO concluded that such trademark shall be canceled per Article 29.1.1 of Trademark Act.

Source: 

1. TIPO's determination: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dDhSTDVUK281UFkwVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

2. Apple's iPhone 12 case: https://www.apple.com/tw_smb_101387/shop/product/MHLM3FE/A/iphone-12-12-pro-magsafe-%E9%80%8F%E6%98%8E%E4%BF%9D%E8%AD%B7%E6%AE%BC 

Apple prevailed in trademark opposition for its “Pages” App icon

On August 29, 2024, Taiwan’s IP Office (“TIPO”) granted Apple Inc.’s (“Apple”) request to cancel trademark no. 02287852, finding the registered trademark is too similar with Apple’s registered icons for its “Pages” App (no. 01709495, and no. 01970147, see below).

 

The disputed trademark (no. 02287852, see below) was filed by BEIJING XIPULIN TRADING CO. LTD (“XIPULIN”) on July 1, 2022, and granted on April 1, 2023, designated for use in goods under class 9, such as laptop, computer software, computer hardware, downloadable mobile phone application, tablet computer, smartphones, headphones, cameras, etc. Apple filed opposition on June 30, 2023, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

On August 20, 2024, TIPO found in Apple’s favor 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, TIPO notes that both XIPULIN’s and Apple’s trademarks feature a pen of white color, a square of yellow or orange color that encircles the pen, and the tip of the pen is headed toward lower-left of such square. While XIPULIN argued that in its trademark the pen is thicker, has no pen cap, and the page is flipping, TIPO posits that such variations are insufficient to create distinction from Apple’s icon. TIPO considers ordinary consumers would find XIPULIN’s and Apple’s trademarks visually and conceptually similar with each other.

3.      As to the designated use of goods, TIPO also finds the two trademarks are used for similar products. For example, Apple’s no. 01709495 trademark is applied for use in computer, disk, internet equipment, light pen, computer software, etc., and Apple’s no. 01970147 is applied for use in laptop, computer, mobile phone, smart watch, etc. These products are of similar nature, function, and share related purposes with the products designated by XIPULIN’s trademark.

4.      TIPO further notes that Apple’s aforesaid trademarks are highly distinctive, and have been well recognized by the relevant consumers due to its popular “Pages” app. The “Pages” app was first released to Apple’s user in 2013, and made available for other non-Apple users since 2015 for free. Based on the records of news reports and media coverages, TIPO is convinced that Apple’s cited trademarks are more famous and consumers are more familiar with these trademarks.

5.      In view of the above, considering the high similarity between XIPULIN’s and Apple’s trademarks, the similarity between the designated use of goods, the fact that Apple’s trademarks are highly distinctive and have established great recognizability among the relevant consumers, TIPO concludes that the registration of XIPULIN’s trademark may cause confusion with Apple’s above cited trademarks.

Accordingly, TIPO determines that the disputed trademark shall be canceled per Article 30.1.10 of Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bndMSHFRbGJlL3ZLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

CHANEL successful in trademark opposition against “COCODOR”

On August 30, 2024, French fashion giant Chanel successfully canceled the disputed trademark “COCODOR” by convincing Taiwan’s IP Office (“TIPO”) that such trademark may cause confusion with Chanel’s famous “COCO” trademarks (no. 00102776, no. 00438289, and no. 01781763, see below).

The disputed trademark, “COCODOR” (no. 02346784, see below), was filed by COCODOR TAIWAN CO., LTD on June 16, 2023, and granted on January 1, 2024, designated for use in goods under class 3, including perfume, fragrance, essential oil, lotion, hand cream, skin care products, shampoo, conditioner, shower gel, etc. Chanel filed opposition on April 1, 2024, alleging that registration of “COCODOR” violates Article 30.1.10 and Article 30.1.11 of Trademark Act.

TIPO sided with Chanel on ground of 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.      When examining the disputed trademark “COCODOR”, TIPO notes that such a mark starts with similar letters “COCO”, which makes it verbally and visually similar with Chanel’s cited trademarks “COCO”. Ordinary consumers will find “COCO” constitute the dominant portion of both trademarks, and are more inclined to find them similar with each other.

3.      TIPO notes that the disputed trademark is designated for use in products like perfume, skin cleansing, or skin care. The function, nature, or purpose of these products are highly similar with or identical to those of Chanel’s cited trademarks. They both help clean human body, or improve personal beauty. As such, the products designated by “COCODOR” are similar with those designated by Chanel’s “COCO”.

4.      Further, based on evidence of trademark use, TIPO finds Chanel’s “COCO” trademarks have been well known among the consumers in the fields of perfume, cosmetics, fashionable apparels, leathers, etc. In other words, Chanel’s cited “COCO” trademarks are highly recognizable, and consumers are more familiar with Chanel’s “COCO” than the disputed “COCODOR”.

5.      In view of the above, given the visual and verbal similarity between “COCO” and “COCODOR”, the similarity between the designated products, the facts that the cited “COCO” trademarks are well-known and have established profound familiarity among the relevant consumers, TIPO determines that registration of “COCODOR” for use in the designated products may raise confusion with Chanel’s famous “COCO” trademarks.     

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bkpQOVNQK1ZMeG03Q3pKSnREcU83Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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