Apple’s “FACE ID” successful in cancelling “FACE ID A Brand New Me”

On December 20, 2017, a Mr. Chen filed trademark application for “FACE ID A Brand New Me”, designated for use in cosmetic products such as facial mask and eye mask. Mr. Chen’s trademark was granted on August 1, 2018 (Reg. No. 01928507, see below)

APPLE Inc. (“APPLE”) filed opposition on October 30, 2018, alleging violation of Article 30.1.11 of Trademark Act. According to APPLE, Mr. Chen’s opposed trademark would cause confusion with APPLE’s own “FACE ID” trademarks (Reg. No. 02071406, 02058689, 02058688, see below).

                                      

Taiwan’s IP Office (“TIPO”) ruled in APPLE’s favor, finding the opposed trademark violated Article 30.1.11 of Trademark Act:

1.    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.

2.    Here, TIPO first found APPLE’s “FACE ID” trademark series have become famous trademarks after APPLE’s successful use through selling and promoting its iPHONE. Based on evidence showing continuous and wide media exposure in local news reports, including the popular Business Next magazines, iKNOW, and voluminous articles posted and shared among bloggers, TIPO agreed that since its introduction to the market in 2017, “FACE ID” as a new feature of iPHONE has gained wide recognition and known as trademark that represents APPLE’s innovative function adopted in the new iPHONE. Although APPLE’s aforesaid use of “FACE ID” was only months before the application date of the opposed trademark, TIPO found it sufficient to prove that APPLE’s “FACE ID” trademarks have become well-known among the relevant consumers before the filing of the opposed trademark.

3.    As to similarity, TIPO noted that the opposed trademark is composed of “FACE ID” (the larger part) and “A Brand New Me” (the smaller part), with a human face embedded in the letter “D”. TIPO posited that ordinary consumers would consider “FACE ID” the main portion of the opposed trademark, which is highly similar with APPLE’s aforesaid well-known “FACE ID” trademarks. Further, both the opposed trademark and APPLE’s cited trademarks have similar human face design embedded in their letter “D”. As such, TIPO considered the opposed trademark highly similar with APPLE’s aforesaid famous trademarks.

4.    While the opposed trademark is applied for use in cosmetic products, which are different than those designated by APPLE’s aforesaid trademarks, TIPO found APPLE’s aforesaid trademarks are more famous and have not been widely used by others prior to APPLE’s registration. In fact, before the priority date of APPLE’s aforesaid trademarks, there is only one “FACE ID” trademark registered in Taiwan. Thus, if the opposed trademark is allowed to co-exist, the uniqueness and distinctiveness of APPLE’s famous trademarks may be diluted.

 

Given the well-known status of APPLE’s “FACE ID” trademarks, the high similarity between the opposed trademark and APPLE’s cited trademarks, and the fact that “FACE ID” as a trademark is unique and has not been widely used in other goods or services, TIPO ruled that it is likely that the registration of the opposed trademark may dilute the distinctiveness of APPLE’s well-known trademarks. Accordingly, TIPO cancelled the opposed trademark.   

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUVFaU9NZWZ3b3hYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Amazon’s “ECHO” Successful in Cancelling “ECGO” Before Taiwan’s IP Office

AMAZON TECHNOLOGIES, INC. (“Amazon”), the registrant of trademarks “ECHO” in Taiwan (Reg. No. 01661579 and No. 01966088, see below), filed opposition against “ECGO” (Reg. No. 01973518, also see below) on May 30, 2019, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

Taiwan’s IP Office (“TIPO”) sided with Amazon on October 30, 2020, finding “ECGO” subject to 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 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.    With regard to similarity, the opposed trademark is composed of “E”, “C”, “G”, and “O”, while Amazon’s opposing trademarks are composed of “E”, “C”, “H”, and “O”. Thus, the overall visual and pronunciation of the opposed trademark and Amazon’s opposing trademarks are quite similar, with minor difference in that the third letter used in “ECGO” is “G”, while the third letter used in Amazon’s “ECHO” is “H”. Thus, the degree of similarity should be at least medium.

3.    TIPO noted that the opposed “ECGO” trademark is applied for use in goods including “batteries, alarms, battery chargers, charging station devices for electric vehicles, batteries for vehicles, automatic low-voltage indicators for vehicle tires, computer software; downloadable computer application software, downloadable computer programs, and navigation devices for vehicles”. On the other hand, Amazon’s “ECHO” trademarks are used in goods such as “global positioning satellite signal receiver, wireless electronic signal receiver, wireless electronic signal transmitter, speedometer, compass, temperature measuring device, distance measuring device, measuring device, calorie measuring device, vibration alarm, satellite navigation device", and "switch, magnetic data carriers and recording disks for smart interactive speakers, data processing equipment, computers, and computer software”. TIPO noted that the products designated by Amazon’s “ECHO” are usually used in conjunction with the products designated by the opposed “ECGO” (for example, ECGO’s battery charger and Amazon’s computer and measuring device). Thus, TIPO found the products designated by “ECGO” are associated with those designated by Amazon’s “ECHO”.

4.    “ECHO” usually refers to repetition of sound due to reflection of sound wave, which is not related to the nature or function of products designated by Amazon’s opposing trademarks. Therefore, TIPO found “ECHO” highly distinctive.

5.    As to use of trademark, based on voluminous news coverage and marketing materials submitted by Amazon, TIPO found that since 2014, Amazon has been using its opposing trademarks in providing its smart speaker and relevant services. However, the registrant of “ECGO” provided no supporting evidence showing its use of “ECGO”. Hence, TIPO is convinced that the relevant consumers are more familiar with Amazon’s “ECHO”.

In view of the above, given that there is medium degree of similarity, that the designated products of the opposed trademark are associated with those of Amazon’s “ECHO” trademarks, and that Amazon’s “ECHO” possesses high distinctiveness and is more recognizable among the relevant public, TIPO found there exists likelihood of confusion between “ECGO” and Amazon’s “ECHO”. As a result, the opposed “ECGO” trademark is cancelled.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YzMzanZKVjVWYndRNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Huawei’s Trademark Application For “EasyFit” was denied by Taiwan’s IP Office

On October 12, 2020, Taiwan’s IP Office (“TIPO”) found “EasyFit” not distinctive, and thus denied trademark application filed by HUAWEI TECHNOLOGIES CO., LTD. (“Huawei”).

Huawei’s application for “EasyFit” was filed on February 27, 2020, designated for use in watch straps, straps, leather watch straps, strap buckles, metal, leather or plastic straps, sports watches, diving watches, outdoor watches, etc. The issue is whether such application is subject to Article 29.1.1, which provides that: “A trademark shall not be registered if it is……(1) consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services.

Here, although Huawei’s “EasyFit” consists of “Easy” and “Fit”, TIPO found such combination does not provide any new or different meaning beyond the two words “easy” and “fit”. If a mark merely consists of descriptive words and does not change the words original meanings, TIPO posits that such mark in general would still be descriptive and not distinctive.

In view of the above, when seeing “EasyFit”, based on the ordinary understanding of English, TIPO held that consumers would perceive such mark means “easy to fit”. Accordingly, when “EasyFit” is used in goods such as watch straps and strap buckles, consumers would figure it means these products are “easy to fit”, which is description of the nature or function of the designated products, rather than the source or origin of the products.

Based on Article 29.1.1 of Trademark Act, TIPO denied Huawei’s application for “EasyFit.”

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4TGFVWCtmaGxNM1UwanBUR3FwQ2FoZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Application for “LINECAST” Was Denied By Taiwan’s IP Office Due To Similarity With “LINE”

Taiwan’s IP Office (TIPO) denied LINECAST Inc.’s trademark application for “LINECAST” on October 13, 2020, citing violation of Article 30.1.10 of Trademark Act.

The denied trademark application (Application No. 109005347, see below) was filed on January 30, 2020, designated for use in services including podcast transmission, voice mail transmission, internet communication link, online chatting room, data storage, and video teleconference communications. 

TIPO denied LINECAST Inc.’s application 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.  In this case, TIPO found “LINECAST” similar with “LINE” (see below), which is the trademark held by LINE Corp., the famous mobile messaging platform. TIPO, upon comparing “LINECAST” against “LINE”, determined that “LINE” constitutes the distinctive portion of “LINECAST”, and that “LINECAST” is similar with “LINE” on visual, verbal, and conceptual aspects. 

                (No. 01740113 & 02051287)          (No. 02051286 & 01582653)

3.  Additionally, since LINE Corp.’s “LINE” is also designated for use in relevant services such as webcast, digital image transmission, online chatting room information transmission, mobile communication transmission, multimedia instant transmission, and application of internet telephone communication for smart phone and tablet. These services serve similar functions and are related to services that “LINECAST” was applied for use.

4.  With regard to strength of trademark, TIPO noted that LINE Corp. started providing its mobile messaging service on 2011, and its “LINE” trademarks have been used and recognized by millions of users across the globe. In Taiwan, there are about 17 million registered accounts, and “LINE” has become famous among users due to LINE Corp.’s continuous marketing and promotion in Taiwan market. Thus, TIPO determined that “LINE” has become a well-known trademark, and demonstrated more distinctiveness than LINECAST Inc.’s “LINECAST”.

5.  Given the similarity between “LINE” and ”LINECAST”, the similarity between the service designated by “LINE” and that by “LINECAST”, and the high distinctiveness and well-known status of LINE Corp.’s “LINE”, TIPO found registration of “LINECAST” may cause confusion among relevant consumers, and denied the application accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SGFjZGROTnpqL3dXUFRCNXVXcXBTdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office Confirms “IMAX” Is A Well-known Trademark And Cancelled “IIMAX” In Opposition Proceeding

In an opposition proceeding initiated by IMAX Corp. against “IIMAX”, Taiwan’s IP Office (“TIPO”) found “IIMAX” similar with “IMAX”, and may cause confusion among the relevant consumers. Thus, TIPO found in favor of “IMAX” and cancelled “IIMAX” accordingly.

 

“IIMAX” was filed on April 18, 2018, and designated for use in various kinds of safety helmets and protective equipment, such as safety helmet, engineering helmet, goggles, safety helmet lens, sports helmet, riding helmet, safety goggles, sports protection eyepieces, safety protective clothing for motorcycle sports, diving helmets, diving gloves, swimming goggles, and life jackets. “IIMAX” was subsequently granted on December 1, 2018 (Reg. No. 01954460, see below).

IMAX Corp. opposed on February 27, 2019, contending that the registration of “IIMAX” would cause confusion with its famous “IMAX” trademarks (Reg. No. 346099, 341732, 023437, see blow).

                            

TIPO sided with “IMAX”, finding registration of “IIMAX” violated Article 30.1.11 of Trademark Act.

1.      Article 30.1.11 of Trademark Act provides that a trademark shall not be registered if said trademark 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.      In this case, TIPO first found “IMAX”, after years of continuous use in screening and filming service, has become a well-known trademark that not only refers to specific filming technology, but also represents IMAX Corp.’s unique and innovative filming system. Aside from obtaining trademark registrations, evidence also shows that IMAX Corp.’s “IMAX” service has been widely used in more than 1,000 theaters around the globe, including at least 6 theaters and 3 national museums in Taiwan. Thus, TIPO held that prior to the filing of “IIMAX” on April 18, 2018, “IMAX” has already become a well-known trademark in the field of cinematography and the relevant hardware and software service.

3.      In terms of similarity, “IIMAX” and “IMAX” share the same word “MAX”, and the difference is minor in that “IIMAX” starts with “II” while “IMAX” starts with “I”. TIPO therefore found “IIMAX” similar with “IMAX” due to their similar pronunciation and visual appearance.

4.      TIPO noted that “IIMAX” was applied for use in goods including sports helmet and clothing, which are for recreational purpose. Since “IMAX” is also used in providing recreational (i.e., movie) service, TIPO considers that the designated service or goods may serve the same group of consumers, and that it is likely that these consumers may misunderstand that the service or goods are originated from the same source or affiliated companies.

After considering the well-known status of “IMAX”, the similarity between “IMAX” and “IIMAX”, the distinctiveness of “IMAX”, and the fact that both trademarks are designated for use in recreational goods or service, TIPO ruled that “IIMAX” should be subject to Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4T2dyNDRmZWVNWWFCQWdxb3N2cngrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taipei 101 Prevailed Over Magic 101 Store in Trademark Opposition Proceeding Before Taiwan’s IP Office

When speaking of 101 in Taiwan, what is the thing that would immediately pop up in your mind?

If you like shopping and watching the gorgeous New Year fireworks in Taiwan, then Taipei 101 is probably the thing that would come to your mind. “Taipei 101” is famous not only because it’s the name of the well-known financial building, but also because its trademark owner, Taipei Financial Center Corp (“TFC”), has been relentless on going after trademark featuring “101” over the years.

On September 25, 2020, TFC was again successful in cancelling another trademark that popped up on its radar. This time, it’s “Magic 101 Store” (“Magic 101”, Reg. No. 01942756, see below), which is designated for use in services including food retail and wholesale, advertising space leasing, and trade show preparation.

According to TFC, Magic 101 shall be cancelled for violating Article 30.1.11 of Trademark Act, which prohibits registration of a trademark that is similar with other’s well-known trademark so that it may cause confusion among the relevant public. Taiwan’s IP Office (“TIPO”) agreed and found for TFC based on the following reasons:

1. The trademarks cited by TFC, including its registered “101” and “Taipei 101” trademarks (Reg. No. 177868, 165569, and165568, see below), have become famous due to TFC’s continuous and consistent use in providing its shopping, entertaining, and catering service throughout the past decade. Its active use of trademarks, together with its active involvement in popular events such as New Year fireworks and Taipei 101 Run Up, have made “Taipei 101” and “101” become well-known trademarks in the fields of shopping and department store services. To the contrary, TIPO noted that there is little evidence of use submitted by “Magic 101”.

                    

2. Turning to similarity, TIPO found that although there are phrase “THE FRANCHISE GLOBAL” and butterfly design presented in the opposed trademark, the existence of “101” is emphasized in bold fonts with special design on its “0”, which makes “101” the attractive and most distinctive portion of “Magic 101”. Besides, TIPO also noted that the stylized “0” adopted by “Magic 101” is almost identical to the “0” presented in TFC’s “101”. While pure numbers of “101” are not distinctive, TIPO acknowledged that TFC’s long term use of “Taipei 101” and “101” in providing its service has established strong distinctiveness for “101” among the relevant consumers. Since both “Magic 101”, “101”, and “Taipei 101” all feature and emphasize “101” as their main distinctive portions, TIPO found “Magic 101” similar with TFC’s “101” and “Taipei 101”.

3. With regard to the designated services, “Magic 101” was applied for use in services like retail and wholesale, advertising space leasing, etc. TIPO was of the view that these services are highly associated with shopping and department store services designated by TFC’s “Taipei 101” and “101”.

4. Given that TFC’s “Taipei 101” and “101” trademarks have become famous and gained high distinctiveness in the fields of shopping and department store services, that “Magic 101” is similar with “Taipei 101” and “101”, and that the designated services of “Magic 101” are highly associated with those of “Taipei 101”, TIPO determined that “Magic 101” would cause confusion with TFC’s famous “Taipei 101” and “101” and thus violates Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4S1hUMUpiNjc5Sm1Zd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

“Oriental Allure” Was Found Similar With Chanel’s “Allure” and Cancelled By Taiwan’s IP Office

On August 6, 2018, ZHONG TIAN ZHENG HE XING CO., LTD. (“Zhong Tian”) filed trademark application for “Oriental Allure”, designated for use in cosmetics, herbal extracts for beauty, facial masks, facial cleansers, eye creams, cleansers for the body, lip gloss, lotions, body creams, skin care products, make-up removers, cleansing lotions, moisturizer, hair care products, sunscreen lotion, and shampoo. Zhong Tian’s application was granted on February 16, 2019 (Reg. No. 01969648, see below)

Chanel filed opposition against Zhong Tian’s aforesaid trademark on May 16, 2019, contending Zhong Tian’s aforesaid trademark would cause confusion with Chanel’s “Allure” trademarks (Reg. No. 00846557 & 00625777, see below).

On September 28, 2020, Taiwan’s IP Office (“TIPO”) found for Chanel, ruling that Zhong Tian’s “Oriental Allure” violates Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark should not be registered if such a mark is similar with a senior mark which is applied for use in identical or similar goods or service so that there exists a likelihood of confusion among the relevant public.

2.    Here, TIPO noted that “allure” means “temptation or enticement”. Such a word, when being used in goods such as cosmetics and body soap, is highly distinctive because it has no direct or indirect connection with the nature or function of the designated goods. Besides, based on the records, Chanel is the owner of most of the registered “Allure” trademarks in Taiwan. In view of such distinctiveness and uniqueness, consumers are likely to be confused even when there is only minor degree of similarity. Although Zhong Tian argued that there are other registrants that also obtain trademark registrations for “Allure”, the number is low and those trademarks are not applied for use in cosmetic goods. TIPO found Zhong Tian's arguments insufficient to prove “Allure” has been widely used in the relevant businesses and is not distinctive.

3.    As to similarity, TIPO noted that Zhong Tian’s opposed trademark is composed of a drawing and stylized words “Oriental Allure”. The word “Oriental” is adjective, and is used to describe the nature of the word “Allure.” Thus, TIPO determined that “Allure” is the main and distinctive portion of Zhong Tian’s opposed trademark, and that the opposed trademark, when viewed as whole, is similar with Chanel’s registered “Allure” trademark. While Zhong Tian argued its trademark has its own design ideology, such background is irrelevant because similarity is determined based on the viewpoint of ordinary consumers, not on the underlying design ideology.

4.    Zhong Tian’s opposed trademark is applied for use in cosmetics and cleansing products like facial cleansers, eye creams, body lotions, body creams, make-up removers, and Shampoo. TIPO found functions of these goods highly similar with those designated by Chanel’s “Allure” trademark.

5.    Although both Zhong Tian and Chanel submitted considerable amount of evidence of trademark use to prove the corresponding fame of their trademarks, TIPO found records provided by Zhong Tian less persuasive because the documents it submitted, including news reports of its sponsored events, failed to show Zhong Tian’s use of the opposed trademark. Some documents did not show the use of "Oriental Allure", while the others were not properly dated. To the contrary, TIPO found evidence submitted by Chanel, including records of trademark registrations, advertising and marketing materials (including promotions on Vogue, BAZAAR, and GQ Men’s Uno), and other TIPO’s prior determinations, sufficiently demonstrated Chanel’s continuous and consistent use of “Allure”. Thus, TIPO rejected Zhong Tian's arguments that its “Oriental Allure” has already become famous among the relevant public and thus would not be confused with Chanel’s “Allure”.

In light of the similarity with Chanel’s “Allure” trademark, the similarity with the goods in which Chanel’s “Allure“ was applied for use, the high distinctiveness and recognizability of Chanel’s “Allure”, and the fact that the relevant consumers are more familiar with Chanel’s “Allure” at the time when Zhong Tian filed its application for “Oriental Allure”, TIPO ruled in Chanel’s favor, and cancelled the opposed trademark accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R0c2QjNCVDJzbE1HajdkNTFKTUdzdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true