Trademark application for “Black Mamba” is considered against public interest and accepted principles of morality by Taiwan’s IP Office

Protako Fishing Tackle Co., Ltd (“Protako”), a company that provides fishing gears, filed trademark application for “黑曼巴Black Mamba” (Application No. 108030063, see below) on May 15, 2019, for use in goods including fishing tackle, fishing gear, fishing reel, fishing bait, fishing rod, etc. 

Taiwan’s IP Office (“TIPO”) denied Protako’s application on November 19, 2020, based on Article 30.1.7 of Trademark Law:

1.    Article 30.1.7 of Trademark Law provides that a trademark shall not be registered if registration of such trademark is contrary to public policy or to accepted principles of morality. The purpose of Article 30.1.7 is to protect social norms and public interest, especially when registration of a trademark may have negative impact on the fair competition or cause a lot of ill feeling among the public.

2.    In this case, TIPO considers Protako’s application violates Article 30.1.7 of Trademark Act. “Black mamba” is the nickname of the late shooting guard of LA Lakers, Kobe Bryant. When speaking of “Black mamba”, the public would immediately connect the name with the late basketball legend. Thus, the name has a strong appeal and huge business potential. If Protako’s application were to be allowed, the public may misunderstand that the fishing gears provided by Protako is related to or associated with the late basketball player. TIPO is also concerned that exclusivity over the name of a global icon may be detrimental to consumer’s interest and fair competition.

3.    Before making final decision, TIPO asked Protako to provide explanation that could support its application and use of such trademark, but Protako provided nothing in response. As such, TIPO denied Protako’s trademark application accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UjVtcVkwblM0SjdOU0JtWjBLalNXZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“Pen-Pineapple-Apple-Pen” ruled not similar with Apple’s famous logo

On December 5, 2017, Avex Inc. (“Avex”) filed trademark application for “Pen-Pineapple-apple-Pen”, which is the title of the popular song performed by Japanese comedian Pikotaro, for use in goods under class 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 32, and services under class 35, 41, 43 and 45. Avex’s application was granted on October 16, 2018 (Reg. No. 0194523, see below).

Apple Inc. (“Apple”) filed opposition on January 15, 2019, contending that the registration of Avex’s opposing trademark would cause confusion with Apple’s famous “Apple” and “Apple Pencil” trademarks (see below).

On November 18, 2020, Taiwan’s IP Office (“TIPO”) ruled in Avex’s favor, finding no violation of Trademark Act.

On issue of similarity, TIPO finds “Pen-Pineapple-Apple-Pen” bears little similarity with Apple’s “Apple” or “Apple Pencil”, because the opposed trademark consists of words such as “pen”, “pineapple”, and “apple”, and would be perceived as an expression of sentence. On the other hand, Apple’s logo “Apple” refers to a specific fruit, and would be perceived as one single word. Thus, the overall appearance, pronunciation, and concept of Avex’s trademark is different from those of Apple’s opposing trademark. Apple argues that its “Apple Pencil” should be found similar with “Pen-Pineapple-Apple-Pen”, for “pen” is similar with “pencil”. TIPO is not persuaded. Rather, TIPO evaluates the entirety of Avex’s “Pen-Pineapple-Apple-Pen”, and finds its structure so complex that it is not likely for ordinary consumers to confuse it with Apple’s “Apple Pencil.” Thus, the similarity between Avex’s and Apple’s trademarks is low.

 

As to the designated use of goods or services, TIPO finds that some of them are similar or associated with those designated by Apple’s opposing trademarks in terms of their nature, function, or targeted customers (e.g., computer program, application, earphone, headphone, watch, notebook, etc.), while others are distinguishable (e.g., pet bed, dog house, perfume, tomato sauce, soy sauce, vinegar, and shampoo).

 

While TIPO acknowledges the well-known status of Apple’s “Apple” and “Apple Pencil”, TIPO is also aware of the recognizability of Avex’s “Pen-Pineapple-Apple-Pen” due to the global success and popularity of the brainwashing single. Hence, Avex’s “Pen-Pineapple-Apple-Pen” is distinctive and consumers in Taiwan should be quite familiar with Avex’s trademark. Moreover, with wide coverage of mainstream media like CNN, Time, BBC, and recognition of Guinness World Records as the shortest but most popular single that charts the Billboard Hot 100, TIPO notes that Avex’s “Pen-Pineapple-Apple-Pen” is already well-known among the relevant public, and Avex would have no intent to imitate Apple’s “Apple” or “Apple Pencil”. In short, it would be easy for ordinary consumers to distinguish Avex’s “Pen-Pineapple-Apple-Pen” from Apple’s “Apple” or “Apple Pencil”.

 

In view of the above, although some of the designated goods of Avex’s opposed trademark are similar with those of Apple’s well-known “Apple” and “Apple Pencil”, TIPO finds there should be no likelihood of confusion or dilution given the low similarity between Apple’s and Avex’s trademarks, and the fact that both trademarks are distinctive and quite famous among the relevant consumers. As a result, Apple’s opposition was denied.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4QjF4YW9WaW8yRXpKTVYrSURuM1lOZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Pikotaro's PPAP:

https://www.youtube.com/watch?v=NfuiB52K7X8

  

Taiwan’s IP Court ruled that consumers would not confuse “GIOVANNI VALENTINO” with “VALENTINO”

This case pertains to a long dispute between “GIOVANNI VALENTINO” and “VALENTINO.”

A. Background:

About 10 years ago, the trademark holder for “VALENTINO”, Valentino S.P.A. (“Valentino”), filed numerous challenges against the then owner of “GIOVANNI VALENTINO” trademarks, Florence Fashions (Jersey) Limited (“Florence”), alleging, among the others, that the similarity between Florence’s “GIOVANNI VALENTINO” (Reg. No. 1154031, 1154174, 1141358, 1156129, and 128109) and Valentino’s “VALENTINO” would cause confusion among the consumers (see below). 

	Florence’s Opposed Trademarks	Valentino’s cited trademarks
1	（Reg. No. 1154031）	（Reg. NO. 429221）
2	（Reg. No. 1154174）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, and 929395）
3	（Reg. No. 1141358）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, 929395）
4	（Reg. No.1156129）	（Reg. No.446037, 358389, 410686, 429221, 434569, 430311, 929395）
5	（Reg. No. 128109）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311）

Valentino’s aforesaid oppositions resulted in a series of court’s decisions, which were not in Valentino’s favor, for the then Taipei High Administrative Court (“THAC”) and the Administrative Supreme Court (“ASC”) held that the word “Valentino” was a common Italian name that has been widely used by other trademark registrants. As such, the THAC and ASC ruled that “Valentino” should have relatively “thin” exclusivity, and that there would be no confusion caused.

B. The New Dispute:

On May 3, 2017, another trademark application for “GIOVANNI VALENTINO” was filed by Annabella Valentino, the legal representative of Florence, and was applied for use in goods under Class 25, including various kinds of suits, underwear, pajamas, shorts, skirts, shirts, shoes, socks, sportswear, women’s blouses, jeans, coats, and jackets. The trademark application was then assigned to Yunix International Corp. (“Yunix”), and later granted as trademark Reg. No. 1920306 (see below) on June 16, 2018.

Valentino again filed opposition based on its “Valentino” series trademarks (see above), citing violation of Article 30.1.10 and 30.1.11 of Trademark Act. In its opposition, Valentino cited a new ASC decision backing its argument that although “Valentino” is a common Italian name, it has become a well-known trademark and thus is still likely to be confused with other trademark that also uses “Valentino” in similar goods. However, the IP Office (IPO) and the Appeal Board both rejected Valentino’s claim. Therefore, Valentino filed complaint with the IP Court (IPC), demanding Yunix’s “GIOVANNI VALENTINO” trademark be cancelled.

C. IP Court's decision:

The IPC entered decision on November 30, 2020, affirming the determination made by the IPO.

1.    With regard to Article 30.1.11

1)    Article 30.1.11 provides that a trademark shall not be registered if it is similar with a well-known trademark that may cause confusion among the relevant public, or may damage the distinctiveness or reputation of said well-known trademark.

2)    Here, the IPC affirms that Valentino’s alleged trademarks have become well-known, but only within the fields of goods that the trademark “Valentino” has been put in use. In other words, “Valentino” may be famous among the “relevant” consumers, but not so among the general public.

3)    As to similarity, the IPC notes that there are other elements like “GIOVANNI” and the green backdrop adopted in Yunix’s “GIOVANNI VALENTINO” trademark. With such difference in mind, the degree of similarity between Yunix’s “GIOVANNI VALENTINO” and Valentino’s “VALENTINO” is medium.

4)    As to likelihood of confusion, Valentino argues that there might be confusion in view of the similarity found in Yunix’s trademark and its designated goods. IPC disagrees, and rules in Yunix’s favor because “GIOVANNI VALENTINO” and “VALENTINO” have been co-existing for more than 10 years. The long period of co-existence without evidence of actual confusion makes Valentino’s arguments unpersuasive.

5)    While Valentino also argues that distinctiveness of “VALENTINO” may be diluted due to registration of Yunix’s “GIOVANNI VALENTINO”, the IPC rules that dilution theory is not applicable, because Valentino’s trademark is only famous within the relevant consumers, and has not reached the level of being well-known among the general public.

2.    With regard to Article 30.1.10

1)    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such mark is similar with a senior mark and is applied for use in similar goods or service, so that there exists likelihood of confusion among the relevant consumers.

2)    While “GIOVANNI VALENTINO” is similar with “VALENTINO”, and applied for use in similar goods, the IPC finds co-existence for more than 10 years without evidence of actual confusion tilts to the favor of Yunix. Valentino contends that there are other court decisions which hold the view that “VALENTINO” being a common Italian name could still be highly distinctive and be awarded with greater protection. The IPC acknowledges that these decisions support Valentino’s position, but opines that they are not enough to outweigh the finding that “VALENTINO” and “GIOVANNI VALENTINO” have been co-existing for more than 10 years without evidence showing consumer’s confusion. Besides, Yunix's “GIOVANNI VALENTINO” looks exactly the same as Florence's previously opposed “GIOVANNI VALENTINO” trademark, which the ASC already held consumers would not be confused with Valentino's trademarks. Thus, the IPC sees no reason to change the  previous position taken by ASC, and finds that consumers would know how to distinguish the two trademarks since they have been co-existed for such a long time.

In view of the above, Valentino’s request to cancel the newly filed “GIOVANNI VALENTINO” trademark is denied. 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c56%2c20201130%2c2 

美國聯邦交易委員會(FTC)再度出手，命社群與影音串流業者說明資料收集與商用行為

根據美國聯邦交易委員會（Federal Trade Commission，下稱FTC）2020年12月14日的聲明稿，FTC將行使Federal Trade Commission Act第6條(b)的權利，要求包含Amazon、ByteDance (TikTok)、Discord、Facebook、whatsapp、Reddit、Snap、Twitter、Youtube等業者，在45天之內，以書面回覆這些企業就其提供的社群與影音串流服務，是如何收集與利用消費者的個人資料，以及相關的商用模式。

 

從FTC所釋出的文件內容觀察，上述公司需提交的內容至少包含：

一、            自2019年1月1日起至今公司所提供社群與影音串流服務的一般性資訊

例如：使用者註冊的數量、每天的用戶數量、每月的用戶數量、隱私設定、廣告的曝光程度等。

二、            基於上述一、的服務內容，其相對應所受集、利用、儲存、揭露與刪除的資料

例如：提供服務時所使用、追蹤、評估、或衍生的用戶屬性資料；相關的商業運用計畫、發展策略等。

三、            公司所提供的數位廣告服務

例如：鎖定的用戶族群、收費機制等。

四、        若公司就其上述一、的服務內容有採用演算法等工具解析消費者個人資料，需說明其分析的個人資料種類以及這些分析工具的使用方式

五、        就上述一、的服務內容，詳細說明公司如何評估、研究、與提升使用者互動度(User Engagement)

六、        就上述一、的服務內容，詳細說明其相關的人口統計資訊

例如：公司如何分類或推斷使用者所屬的族群、以及有關使用者個人及其家庭的資料

七、        就上述一、的服務內容，詳細說明服務對象是否包含孩童與青少年？

八、        與市面上其他類似競爭服務的關係

九、        其他相關的資料。

 

來源：

https://www.ftc.gov/news-events/press-releases/2020/12/ftc-issues-orders-nine-social-media-video-streaming-services  

 

關於調查的內容，可參考：

https://www.ftc.gov/system/files/documents/reports/6b-orders-file-special-reports-social-media-service-providers/6bs_order_os_final.pdf

Eagle Creek’s “PACK-IT” unable to cancel Skyline Marketing’s “pack all” in trademark opposition proceeding

On November 3, 2020, Taiwan’s IP Office (“TIPO”) rejected opposition filed by Eagle Creek Inc. (“Eagle Creek”) against Skyline Marketing LLC’s (“Skyline Marketing”) “pack all” trademark. 

The opposed trademark, “pack all”, was filed on July 13, 2018, designated for use in goods under Class 9, such as swimming goggles, glasses, wires, selfie stick, earphones, scale, electronic scale, smart watch, and thermometer. Skyline Marketing’s “pack all” was granted on February 16, 2019 (Reg. No. 01970144, see below).

 

Eagle Creek filed opposition against “pack all” on May 16, 2019, citing violation of Article 30.1.11 and 30.1.12 of Trademark Act. More specifically, Eagle Creek contended that Skyline Marketing’s “pack all” would cause confusion with or dilute the distinctiveness of Eagle Creek’s famous “PACK-IT” trademark (Reg. No. 01707277, see below).

TIPO sided with Skyline Marketing, finding no violation of the cited Trademark Act:

1.    Article 30.1.11 and 30.1.12 of Trademark Act provide that:

“A mark shall not be registered when such mark:

Being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark (Article 30.1.11);

being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration (Article 30.1.12).”

2.    With regard to Article 30.1.11, TIPO noted that the applicability of Article 30.1.11 premises upon the fact that the opposing trademark, which in this case is Eagle Creek’s “PACK-IT”, must be a well-known trademark. However, upon reviewing all the evidence of trademark use submitted by Eagle Creek, TIPO found the evidence submitted fell short, because most of the documents are in foreign language (I.e., English). Thus, it is unclear if local consumers could recognize and form familiarity with Eagle Creek’s opposing trademark.

3.    In addition, TIPO opines that since “pack” could mean packaging and wrapping, “pack” is not that distinctive when used in goods that serve the functions of packaging or wrapping. In this case, TIPO found Eagle Creek’s “PACK-IT” is designated for use in goods like backpack, book bag, waist bag, wallet and hand bag. Thus, Eagle Creek’s “PACK-IT” is not highly distinctive and would not form strong impression among the relevant consumers in Taiwan.

4.    Since Eagle Creek’s “PACK-IT” is not highly distinctive and less likely to form strong impression amount consumers, and Eagle Creek was unable to provide sufficient evidence showing its “PACK-IT” has built strong recognizability among local consumers here in Taiwan, TIPO found Article 30.1.11 is not applicable in this case.

5.    As to Article 30.1.12, TIPO noted that this statute is applicable when there is evidence showing the opposed trademark was filed with intent to imitate a similar senior trademark that is used in identical or similar goods or service. Again, TIPO found there was no such evidence in this case.

6.    First, as noted above, evidence submitted by Eagle Creek was insufficient to show “PACK-IT” has become a well-known trademark in Taiwan. Thus, there should be little incentive for Skyline Marketing to file “pack all” in order to imitate Eagle Creek’s “PACK-IT”. Additionally, “PACK-IT” was applied for use in various kinds of bags, and their functions, source of manufacture, and sales channel are not related to goods like goggles, glasses, scale, and smart watch, which are designated by Skyline Marketing’s “pack all” trademark. Since “PACK-IT” is not well-known and “pack all” is applied for use in different kinds of goods, TIPO found there was no reasonable ground to support a finding of intent to imitate on the part of Skyline Marketing. Therefore, TIPO ruled that Article 30.1.12 is not applicable.

In view of the above, Eagle Creek’s opposition against “pack all” was denied by TIPO.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4emZqVE9QL3pqN3I0dm83YWNqNlhnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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