NIKE’s “JUST DO IT” beat “JUST TRI IT” in Taiwan’s IP Office

TAIWAN TRIATHLON CO., LTD. (“TTC”), a Taiwan-based company providing service for arranging and organizing sports and training events, filed trademark application for “JUST TRI IT” on March 20, 2019, designated for use in services including organizing triathlon and sports event; providing fitness training and coaching; and providing information of recreational activity and training exercise. TTC’s application was granted on April 16, 2020 (Reg. No. 02054520, see below). NIKE INNOVATE C.V. (“NIKE”) filed opposition on June 11, 2020.

According to NIKE, TTC’s opposed trademark is similar with NIKE’s “JUST DO IT” trademark (Reg. No. 01732276, see below), and may cause confusion on the relevant consumers.

Taiwan’s IP Office (“TIPO”) sided with NIKE on July 29, 2020, ruling that TTC’s opposed trademark should be cancelled based on the following reasons:

 

1.    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such 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 found TTC’s “JUST TRI IT” similar with NIKE’s “JUST DO IT”. Although TTC’s opposed trademark is composed of the phrase “JUST TRI IT” and three icons of athlete, the main portion of TTC’s trademark is still “JUST TRI IT”. From the viewpoint of ordinary consumers, the only difference between the two trademarks is their second word. Thus, the overall appearance and pronunciation of the two trademarks are similar.

3.    Additionally, TIPO noted that NIKE’s cited trademark is also applied for use in entertainment services, arranging, organizing and holding a series of sports activities and competitions; and providing sports courses and holding sports lectures for training sports professionals. These services are highly similar with those designated by TTC’s “JUST TRI IT”, because they are all related to arrangement of sports contests, and providing recreational and educational service.

4.    Besides, NIKE’s “JUST DO IT” is highly distinctive. In Taiwan, TIPO found NIKE is the only registrant that acquires registration for “JUST DO IT”. Such mark, after NIKE’s continuous and profound use, has become a well-known trademark, and is more recognizable among the relevant consumers. As such, it is obvious that the relevant consumers are more familiar with NIKE’s “JUST DO IT”.

 

Given TTC’s “JUST TRI IT” is similar with NIKE’s “JUST DO IT”, applied for use in similar service, and NIKE’s “JUST DO IT” is distinctive and possesses higher fame in service regarding organizing and arranging sports event, TIPO ruled TTC’s “JUST TRI IT” may cause confusion among the relevant public and thus should be cancelled based on Article 30.1.10 of Trademark Act.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4T2xVYlovendEdlJhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office cancelled logo that is similar with Jaguar’s Trademark

When seeing the below trademark (Reg. No. 02022659), could you recognize the letters presented? (Hint: they are English alphabets.)

If you think they are “X” and “F”, then you are right!

But that’s also why on February 12, 2020, JAGUAR LAND ROVER LIMITED (“JAGUAR”), the multinational British automotive company, filed opposition against this logo before Taiwan’s IP Office (“TIPO”), alleging likelihood of confusion with JAGUAR’s registered “XF” trademark (Reg. No. 01258404, see below)

TIPO sided with JAGUAR on August 11, 2020, ruling that the opposed trademark violates Article 30.1.10 of Trademark Act, which provides that “A trademark shall not be registered if it 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”.

On similarity, TIPO noted that the opposed trademark is composed of English alphabet “F” and three stylized dots. The three dots are arranged and positioned in the upper-left, the middle, and the bottom-left in relation to the alphabet “F”, and they are connected with “F” in a way that would also generate the visual impression of “XF”. Thus, TIPO posited that there is medium degree of similarity between the two trademarks.

As to the designated goods, the opposed trademark is designated for use in automobile and its parts, such as rearview mirror, sideview mirror, windshield, steering wheel, and rim, while JAGUAR’s “XF” trademark is applied for use in automobile, sports car, and RV. Therefore, TIPO posited that the two trademarks are designated for use in similar goods.

Meanwhile, TIPO noted that JAGUAR’s “XF” trademark has been put in use since 2008, and the car that features the “XF” trademark was introduced to Taiwan in 2014. Moreover, “XF” is highly distinctive because it is not related to the nature and function of the goods it is applied for use. On the other hand, TIPO noted that there is little evidence submitted to prove the use and consumer’s recognition of the opposed trademark. Hence, TIPO opined that the relevant consumers are more familiar with JAGUAR’s “XF”, which shall be awarded with greater weight when considering likelihood of confusion.    

In conclusion, since the opposed trademark is similar with JAGUAR’s “XF” trademark, is applied for use in similar goods, and JAGUAR’s “XF” is distinctive and is more recognizable, TIPO ruled that the opposed trademark should be cancelled due to likelihood of confusion caused by its similarity with JAGUAR’s “XF”.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K3Z3NmRXQmhHdGh1VmZrR3hjRHlxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Godzilla Gear”, A Trademark Applied For Use In Export And Import Service, Was Cancelled Due To Likelihood of Causing Confusion With Toho’s Famous “GODZILLA” Trademark

 Toho Co. Ltd. (“Toho”), the Japanese company that creates the iconic monster movie series “Godzilla”, filed trademark opposition in Taiwan’s IP Office. (“TIPO”) against “Godzilla Gear” on April 14, 2020, citing violation of Article 30.1.11 of Trademark Law.

The opposed trademark, “Godzilla Gear”, was filed on June 3, 2019, originally applied for use in retail and wholesale, department store, online shopping, and convenience store services, and products such as suitcase, backpack, purse, sportswear, swimsuit, apparel, toy bag, pajamas, cap, necktie, etc. To overcome the similarity posed by Toho’s registered “GODZILLA” trademarks, the applicant reduced the scope of designated services, and TIPO in the end granted the application on January 16, 2020. The opposed trademark, after modification of its designated use, only covered services including import and export, auction, online action, and providing market information (Reg. No. 02036332, see below). 

However, Toho still filed opposition against “Godzilla gear”, contending that registration of such trademark would cause confusion with its famous “GODZILLA” (Reg. No. 00667250, see below).

Trademark holder of “Godzilla Gear” argued that the services in which the opposed trademark is applied for use are very different from Toho’s “GODZILLA” trademark, which is applied for use in products and service such as caps, scarf, backpack, computer, toy, jewelry, and entertainment. Thus, “Godzilla Gear” will not cause confusion with Toho’s registered “GODZILLA” trademark.

TIPO, based on the following reasons, sided with Toho:

1.    TIPO found that Toho’s registered “GODZILLA” has become a famous trademark at the time when the opposed trademark was filed. Toho submitted sufficient evidence in this regard, such as records showing that the monster movie series “GODZILLA” was first introduced in as early as 1954, and that the iconic monster “GODZILLA” has been the leading character in multiple popular movies, including “Godzilla against Mecha Godzilla” (2002), “Godzilla: Tokyo SOS” (2003), “Godzilla: Final Wars” (2004), “Godzilla” (2014), and “Godzilla II: King of the Monsters” (2019). In particular, the reboot “Godzilla” movie in 2014 was ranked among Taiwan’s top 10 movies of 2014, and its sequel “Godzilla II: King of the Monsters” was also a box office hit, accumulating NT$ 200 million within just four weeks after its introduction to Taiwan’s cinema. Thus, TIPO was convinced that “GODZILLA” has been widely recognized and achieved the status of well-known trademark before the opposed trademark was filed in 2019.

2.    As to similarity, TIPO noted that both “Godzilla Gear” and Toho’s “GODZILLA” feature the word “Godzilla”, and such word would constitute the main portion of trademark upon being seen by ordinary consumers. Thus, the visual appearance, pronunciation, and concept of the two trademarks are highly similar to each other.

3.    The word “Godzilla” is created by Toho and has no ordinary meaning. Therefore, it is highly distinctive, and consumers will have strong tendency to view it as trademark.

4.    Aside from appearing in the monster movies, Toho’s “GODZILLA” has been widely used on various types of merchandise, such as apparels, movie posters, stationery, and toys. Although the opposed trademark is applied for use in export/import and online auction service, which are not the same as those designated by Toho’s “GODZILLA” trademark, TIPO posited that given the well-developed and diverse marketing channels, it is likely that products bearing Toho’s “GODZILLA” are also supplied through the import/export or online service. Therefore, TIPO considers that the designated services of the opposed trademark are associated with the products designated by Toho’s “GODZILLA”.

Based on the aforesaid reasons, TIPO sided with “GODZILLA” and cancelled “Godzilla Gear” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SnRWUzNNYmJ0bkpBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true          

NBA successful in cancelling “Battle Bee” trademark in view of similarity with its registered trademark for “Charlotte Hornets”

On August 17, 2020, Taiwan’s Intellectual Property Office ("TIPO") sided with NBA Properties, Inc. (“NBA”), and ruled that the “Battle Bee” trademark (Reg. No. 01941799, see below) should be cancelled due to similarity with NBA’s registered trademark for the team “Charlotte Hornets” (Reg. No. 01682798, see below).

(Reg. No. 01941799)

(Reg. No. 01682798)

On March 19, 2018, the opposed trademark, “Battle Bee”, was filed and applied for use in goods under Class 12, including automobile, wheel, seats for automobile, automobile parts, pipe, brake, water tank, etc. The opposed trademark was granted on October 1, 2018. NBA filed opposition against the “Battle Bee” trademark on December 28, 2018, alleging violation of Trademark act.

Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such mark is identical with or similar to another person’s well-known trademark, 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, unless the proprietor of the said well-known trademark consents to the application.

TIPO found for NBA based on the following reasons:

1.    First of all, there were large amount of records submitted by NBA showing that at the time the opposed trademark was filed, NBA’s registered trademark “Charlotte Hornets” has already been famous and well-known in the relevant public. For example, “Charlotte Hornets” was registered in 2014, and such trademark has been recognized by sport fans in Taiwan through the wide TV broadcast of games, and news coverage. In particular, the owner of team “Charlotte Hornets” is the legendary NBA players Michael Jordan, and Jeremy Lin, the one who created “Linsanity”, also played for the team “Charlotte Hornets”. Thus, “Charlotte Hornets” enjoys high popularity among relevant public in Taiwan.

2.    As to similarity, both “Battle Bee” and NBA’s “Charlotte Hornets” feature the drawing of a bee, with similar style in portraying the bee’s head, feelers, and wings. Besides, the overall arrangement of the elements presented in the two trademarks are similar as well: both feature a bee as backdrop, with English words displayed horizontally at the center. Thus, “Battle Bee” is similar with “Charlotte Hornet”.

3.    Turning to distinctiveness, TIPO notes that “Charlotte” may refer to the city in the state of North Carolina or a name, and “Hornets” may mean wasp. Thus, “Charlotte Hornets” as a trademark is highly distinctive when used in goods such as recordings of basketball games, sports bag, basketball magazine, jersey, and in services such as production and publication of basketball games recording, basketball training camp, and provision of game information.

4.    TIPO further notes that NBA’s registered trademark “Charlotte Hornets” is not only the team’s icon, but has also been used in wide range of goods, such as apparel, hats, new born baby’s clothes, smartphone holder, bouncy ball, and wristband. Therefore, although “Battle Bee” as a trademark is designated for use in different goods, given “Charlotte Hornets” has been so famous and used in diversified kinds of products, it is still likely that ordinary consumers may misunderstand and be confused that there is license, partnership, or other forms of business relationship between the holders of “Battle Bee” and “Charlotte Hornets.”

 

Based on the aforesaid reasons, TIPO rules that “Battle Bee” should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cHJqNFJ2TGJDeEdZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Monster Energy Lost The Battle of “Claw”

 Nanjing Aisiyou Clothing Co. Ltd. (“NAC”), an apparel brand based in China, filed trademark application for “SUAMOMENT” on April 12, 2017, designated for use in clothing, pants, dresses, knitted clothes, underwear, children's clothing, baby clothes, waterproof clothes, shoes, hats, clothing gloves, scarves, socks , skirts, jackets, shirts, swimsuits, clothing belts, and sneakers. NAC’s opposed trademark was granted on December 1, 2017 (Reg. No. 1883792, see below)

Monster Energy Company (“MEC”) filed opposition against NAC on February 26, 2018, contending that the registration of the opposed trademark would cause confusion with MEC’s registered claw trademarks (see below)

(Reg. No. 1497952, 1713839, 1237373, and 1734749)

The IP Office (TIPO) disagreed, denying MEC’s opposition on December 26, 2018, finding NAC’s opposed trademark did not violate the cited Trademark Act. MEC, after losing its appeal before the Appeal Board, filed complaint with Taiwan’s IP Court (TIPC), requesting TIPO’s ruling should be vacated.

TIPC, based on the following reasons, upheld TIPO and Appeal Board’s decisions:

1.    The opposed trademark and MEC’s cited trademarks are dissimilar. Although both trademarks display the design of a claw, the shape and style of the claws are different. NAC’s claw is displayed at different angle, with blood dripping down below. Besides, NAC’s trademark further includes the word mark “SUAMOMENT”, which provides another distinguishable element for the opposed trademark. Thus, in terms of difference in overall appearance, pronunciation, and conception, TIPC found TIPO was correct in finding the opposed trademark not similar with MEC’s cited trademarks.

2.    MEC contended that the opposed trademark is applied for goods that are similar with those designated by MEC’s cited trademarks. But TIPC did not think so. The court found that while both NAC and MEC applied for use in similar goods such as boots, shoes, and clothes; MEC’s cited trademarks were applied for use in other goods that are different from NAC’s opposed trademark, such as smart phone, tablet computer, cell phone, nutrition supplants, and drinks. Thus, the court did not find the goods designated by NAC’s trademark similar with those designated by MEC’s cited trademarks.

3.    As to the strength of distinctiveness, the court found both MEC’s and NAC’s trademarks unrelated to the nature and function of the designated goods, so the claws featured in MEC’s trademarks and NAC’s opposed trademark are arbitrary and distinctive.

4.    The court noted that in comparison to NAC’s opposed trademark, MEC’s cited trademarks are used in more diversified goods. However, there is no evidence showing actual confusion, and no records suggesting NAC’s and MEC’s products are sold through the same channels.

In view of the above, since NAC’s opposed trademark is not similar with MEC’s cited trademarks; only part of the goods designated by MEC’s trademarks are similar with those designated by NAC’s; and there is no evidence showing actual confusion and NAC’s bad intent, the court in the end ruled that the registration of NAC’s opposed trademark is not likely to cause confusion with MEC’s cited trademarks.   

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,108%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c81%2c20200730%2c2

WeWork Successful In Opposition Proceeding Against “WEE” Before Taiwan’s IP Office

On March 5, 2019, We Easy Development Co. Ltd. (“We Easy”), a Taiwan-based real estate service provider, filed trademark application for “WEE” with Taiwan’s IP Office (TIPO), designated for use in services including real estate leasing and sale, office leasing and selling, office leasing for shared work, apartment house leasing, real estate buying and selling, real estate sales agency, real estate leasing agency, apartment rental service, real estate brokerage, real estate valuation, real estate management, real estate sales consultants, and real estate investment. We Easy’s application was granted on September 16, 2019 (Reg. No. 02011694). WeWork Companies Inc. (“WeWork”) filed opposition on December 16, 2019, contending registration of “WEE” would cause confusion with WeWork’s registered trademarks, such as “WEGROW”, “WE”, and “WEWORK”.

TIPO ruled in WeWork’s favor on July 31, 2020, based on the following reasons:

1.      Similarity of trademark:

TIPO notes that the contested trademark presents stylized characters “WEE”, which bear the same initial characters “WE” as adopted by WeWork in its registered “WE” (Reg. No. 02012857), “WEGROW” (Reg. No. 02009306), “WEWORK” (Reg. No. 01770873), “WETOO” (Reg. No. 01960202), “WE.CO” (Reg. No. 02021379), and “WELIVE” (Reg. No. 02049059) trademarks. Therefore, the contested trademark is similar with WeWork’s asserted trademarks in terms of visual appearance, concept, and pronunciation (see below).

2.      Similarity of the designated services:

Both the contested trademark and WeWork’s asserted trademarks are applied for use in similar services, which involve real estate transaction, office space leasing, construction, consultation, investment, and management services. TIPO finds these services serve similar needs of customers, and thus are related with each other. From the perspective of ordinary consumers, the services that the contested trademark is applied for are similar with those that WeWork's trademarks are applied for.

3.      Strength of trademark:

No matter it is “WEGROW”, “WEWORK”, “WETOO”, “WE.CO”, “WELIVE”, or “WE”, TIPO finds these trademarks have no relation with the nature or function of their designated services. Ordinary consumers, upon seeing these trademarks in the course of transaction, are likely to use these marks to identify and distinguish the sources of service. Thus, WeWork’s asserted trademarks are distinctive.

4.      WeWork’s trademarks are well-known:

TIPO recognized that there are voluminous records supporting the well-known status of WeWork’s asserted trademarks, including, among the others, news reports showing WeWork’s successful business in providing service of space sharing in 140 cities across 37 countries around the world. Moreover, on September 25, 2018, TIPO has already acknowledged the well-known status of WeWork’s trademarks in its opposition ruling No. G01060753. (See https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4N2d5UVJVcWluR20xd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true) Thus, consumers are more familiar with WeWork’s asserted trademarks, and TIPO should give more weight to them when evaluating likelihood of confusion.

In view of the above, TIPO ruled that We Easy’s “WEE” should be cancelled because it is similar with WeWork’s asserted trademarks, applied for use in similar services, and hence may cause confusion among relevant consumers.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4NVlOeTl4dXM5OXhoTWozN3pFd1VKQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office Denied Wynn Resorts’ 3D Trademark Application For Its Signature “Wynn Building”

Wynn Resorts Holdings, LLC (“WYNN”) filed trademark application (Appl. No. 103024370, see below) on May 1, 2014, seeking to trademark its Wynn Building for use in casino, entertainment, hotel, conference, theater, and relevant services. After 6 years of examination, Taiwan’s IP Office (TIPO) denied WYNN’s application on July 14, 2020, finding the structure of the building presented in the 3-dimensional trademark application not distinctive.

According to the Guidelines For Examination Of Unconventional Trademark (“Guidelines”), for a 3-dimensional trademark to be registrable, such mark, as is required for conventional 2-dimensional trademark, has to be distinctive. Applicant needs to prove that ordinary consumers would view such 3-dimensional trademark as a symbol representing source of goods or services, so that consumers could use such 3-dimensional mark to distinguish the products and services in the relevant market. Based on such requirement, in comparison with conventional trademark, TIPO explained that generally it would be more difficult to prove a 3-dimensional shape is distinctive, especially when the contour or shape has been commonly seen in the relevant businesses, because such shape is less likely to be recognized as symbol representing source of goods or services.

 

Turning to WYNN’s application, TIPO noted that the main characteristic of the Wynn Building is its arc shape. However, TIPO found such curve or arc shape feature has been quite common and adopted by other similar hotels or facilities. Thus, such structural feature is not unique and less likely to create strong impression among the consumers. In other words, such feature will only be viewed as structure of building, rather than symbol of source of goods or service. To meet the requirement for registration of 3-dimensional trademark, WYNN has to prove that its Wynn Building has acquired distinctiveness through its continuous marketing and use in Taiwan.

 

WYNN stated that its 3-dimensional trademark application has been granted in the U.S., and submitted relevant news reports regarding its hotel business in Macau and advertising in China, U.S., Korea, Hong Kong, and Japan, trying to prove that its Wynn Building has acquired distinctiveness. However, TIPO found such evidence not supportive because these materials were either used in other countries, or showed the use of word mark “Wynn” only. As such, TIPO determined that these documents could not prove Wynn Building has acquired distinctiveness through continuous marketing and advertising in Taiwan’s market.

 

Based on the reasons above, TIPO denied WYNN’s application accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dlgzMkYzbzBxM2F4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true