Taiwan’s IP Office found no confusion between “FIVI” and Jaguar’s “PIVI” trademark

On February 26, 2021, Taiwan’s IP Office (“TIPO”) denied opposition filed by Jaguar Land Rover Limited (“Jaguar”), determining that registration of “FIVI” would not cause confusion with Jaguar’s “PIVI” trademark.

The opposed trademark, “FIVI”, was filed on August 28, 2019, and granted on February 16, 2020 (Reg. No. 02041389, see below), designated fur use in goods under class 12, including products like bicycle pumps, headrests for vehicle seat, child safety seat, anti-theft device for vehicle, sunshade device for vehicle, windshields, rearview mirror, front headlight wiper, etc. 

 

Jaguar filed opposition on May 15, 2020, contending that the registration of “FIVI” would cause confusion with its “PIVI” trademark (Reg. No. 02037452, see below), which violates Article 30.1.10 of Trademark Law. 

TIPO did not side with Jaguar, finding that the registration of “FIVI” does not violate the cited Trademark Law:

1.    Jaguar argued that “FIVI” is similar with “PIVI” because both share the same letters “I”, “V”, and “I”, but TIPO disagreed. To the contrary, since “FIVI” and “PIVI” are composed of foreign letters, TIPO posited that ordinary consumers would pay more attention to the initial letters, and the difference in the initial letters would be sufficient for consumers to distinguish “FIVI” from “PIVI”. Additionally, the pronunciation of “FIVI” is also different from that of “PIVI”. The degree of similarity between “FIVI” and “PIVI” is medium.

2.    As to the designated goods, TIPO noted that both Jaguar’s “PIVI” and the opposed trademark “FIVI” are applied for use in relevant parts, components, or devices of vehicle. They all serve similar purpose and perform similar function. Therefore, “FIVI” is applied for use in goods that are similar with Jaguar’s “PIVI”.

3.    TIPO acknowledged that Jaguar’s “PIVI” and the opposed trademark “FIVI” are both distinctive because they do not imply or describe the nature, quality, and function of the designated goods. However, TIPO noted that prior to the registration of “PIVI”, there are already other trademarks that also present similar combination of “I”, “V”, and “I”, and are designated for use in similar goods under class 12, For example, there are “GIVI” (Reg. No. 01133052), “KIVI” (Reg. No. 01227785), and “DIVI” (Reg. No. 01864295), which are also applied for use in relevant devices and parts of automobile and motorcycle. Since these trademarks have co-existed for some time, the relevant consumers would know how to distinguish trademarks featuring similar combination of “I”, “V”, and “I”, and are less likely to be confused by registration of “FIVI”.

4.    In view of the above, since the degree of similarity between “FIVI” and “PIVI” is, at best, medium; the opposed trademark “FIVI” is also distinctive; and there have been lots of co-existing trademarks that share similar combination of letters, TIPO found consumers shall be able to distinguish “FIVI” from “PIVI”. Thus, TIPO ruled that registration of “FIVI” would not cause confusion with Jaguar’s “PIVI”, and denied Jaguar’s opposition accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bzkvbVVzTkxPd1lqb0t1ZW5mQUNaZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Court handed “ZARA” a narrow victory in its trademark opposition against “SARACARES”

On February 24, 2021, Taiwan’s IP Court partially vacated IP Office’s determination in opposition proceeding involving “ZARA” v.s “SARACARES”, finding registration of “SARACARES” for use in stationery products (class 16) and advertising and rental services (class 35) would not cause confusion with the famous apparel brand “ZARA”.

 

The contested trademark, “SARACARES”, was filed on February 14, 2017, designated for use in class 16 (for stationery such as notebook, envelope, cards, etc.), class 35 (for various services including advertising, computer database management,  business consultation, department store, supermarket, market research, online shopping, retail and wholesale service for apparel and accessories, accounting, rental service, etc. ) and class 36 (for various financial services including insurance, real estate, banking, security transaction, etc.). 

 

Application for “SARACARES” was granted on October 16, 2017 (Reg. No. 01876420, see below). Industria De Diseno Textil, S.A. (“INDITEX”), registrant of “ZARA” trademarks in Taiwan, filed opposition on January 15, 2018, arguing that the registration of “SARACARES” would cause confusion with its “ZARA” trademarks that were also applied for use in class 16 and class 35. 

On July 14, 2020, Taiwan’s IP Office sided partially with INDITEX, finding “SARACARES” similar with “ZARA”, and would cause confusion with INDITEX’s “ZARA” trademarks because they were applied for use in similar goods (class 16), and services (class 35). Thus, all the designated goods in class 16 and the majority of designated services in class 35 were cancelled by the IP Office. The Appeal Board affirmed the finding of IP Office, so the case was further appealed to the IP Court. 

 

The IP Court narrowed down the exclusivity of INDITEX’s “ZARA” trademark right by vacating part of IP Office’s finding, based on the following reasons:

1.     Although the contested “SARACARES” and the cited “ZARA” trademark series (Reg. No. 01406674, 01345421, 01595432, 01520397, 01535369 see below) share similar initial letters (i.e., SARA v. ZARA), the IP Court found there is still visual difference between the two trademarks, which renders the degree of similarity not as high as was claimed by INDITEX.

2.     The IP Court noted that the cited “ZARA” trademark series are also designated for use in class 16 (stationery products like pen, stickers, stapler, etc.) and class 35 (department store, business consultation, online shopping, vending machine rental, and advertising service), which are similar with the products and services designated by “SARACARES”. However, the IP Court also noted that while “ZARA” as a trademark is well-known in apparel products, there is little evidence of actual use for the products or services designated under class 16 and class 35 in Taiwan. In other words, even though ZARA has registered series of trademarks, such as “ZARA HOME” and “ZARA FOR MUM”, for use in various products and services other than apparel and home accessories, there is no evidence showing these trademarks have actually been put in use in Taiwan. Thus, the IP Court was not persuaded that ZARA’s brand and business is as diversified as claimed by INDITEX in Taiwan.

3.     As to actual confusion, based on the records, the IP Court found the contested “SARACARES” is used in providing online insurance service, which is so different and distant from apparel and clothing business. Therefore, the IP Court was of the view that it is less likely for consumers to be confused due to the co-existence of the two trademarks. 

4.     Further, since the applicant of “SARACARES”, Law Insurance Broker Co. Ltd., is a reputable company specializing in insurance service, and is not INDITEX’s competitor in the same type of clothing business, the IP Court found it unreasonable to infer that the filing for “SARACARES” was based on applicant’s bad faith or intent to imitate. 

5.     In view of the above, among the services designated by “SARACARES” in class 35, the IP court found the retail and wholesale services for the apparel products might cause confusion with the famous “ZARA” trademarks, because consumers may misconceive that “SARACARES” belongs to the same “ZARA” trademark series. The IP court affirmed the IP Office’s finding in this respect.

6.     As for products and services that are not related to clothing, such as stationery, advertising and rental service, the IP Court determined that the likelihood of confusion caused by “SARACARES” should be balanced by the fact that its similarity with “ZARA” is not high, that “ZARA” as a trademark in Taiwan is well-known in apparel products but is rarely used in other type of goods, that there is little likelihood of confusion because of the difference of industries, and that the contested trademark was not filed out of bad faith. As such, the registration of “SARACARES” for goods in class 16 and rental and advertising services in class 35 should not be found violating Trademark Law.

 

Source: 

IP Office’s decision:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U2ZDYmRtQ1JDRGRxekx0eGxvMWs5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

IP Court’s decision: 

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c91%2c20210224%2c3

 

IP Court sided with LEGO in trademark infringement lawsuit, finding vendor’s use does not constitute fair use of trademark

In general, trademark right entitles its right holder to exclude others from using the trademark in the same or similar products or services, because such use may create confusion among the relevant consumers, making them believe the products they purchase come from the same source, while in fact, they do not. However, not every use of trademark would necessarily constitute actionable trademark use. It is because under certain context, the trademark is not used to identify the source of goods. For example, sometimes it is permissible for one to show other’s trademark in order to demonstrate or explain product compatibility.

 

Article 36.1.1 of Taiwan’s Trademark Law provides further guidance in this regard. Per Article 36.1.1, a registered trademark shall not entitle the proprietor to prohibit a third party from…… indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in relevant industry and not using it as a trademark. Nonetheless, it is not always clear whether the use is compliant with “honest practices”.

 

In 109-Ming-Zhuan-Su-Zi No. 27, the Intellectual Property Court (IPC) dealt with this issue. In this case, the plaintiff, LEGO Juris A/S (“LEGO”), filed trademark infringement lawsuit against a local vendor, who allegedly used plaintiff’s trademarks (see below) in selling Lego product. LEGO did not dispute that the products sold by the defendant are genuine, but argued that when marketing and promoting its business, the defendant illegally used LEGO’s trademarks on the advertising materials, such as the banners, exhibition board, and posters.

 

The defendant argued that the Lego stickers it used on the banners and exhibition board are all genuine products purchased from local market, so LEGO’s trademark right should be exhausted. The defendant further argued that its business name is also displayed on the banners, so there is no intent to use LEGO’s trademark, and the defendant should be exempt from LEGO’s trademark right. The IPC disagreed.

 

After taking a close look at the defendant’s banners and exhibition boards, the IPC noted that in comparison with the displayed Lego sign, the font size of defendant’s business name is quite small, which could hardly be noticed by consumers. If the true intent is to show the defendant’s business name, it makes no sense for the defendant to highlight LEGO’s stickers and make the real business name less visible. In fact, it would be unreasonable and unnecessary for the defendant to enlarge the Lego sign on its banners and posters. Thus, the IPC is not persuaded that defendant’s use is compliant with honest practices in the relevant industry.

 

As for defendant’s exhaustion defense, the IPC noted that the Lego stickers used by the defendant are genuine, and thus are subject to doctrine of exhaustion. However, the IPC held the view that the scope of exhaustion is limited to the resale of stickers, and shall not extend to defendant’s subsequent use for marketing or promoting the product it sold. When the defendant used the Lego stickers to promote the products it sold, such use has nothing to do with the resale of the stickers, and should not be subject to exhaustion doctrine.

 

In view of the above, the IPC ruled in favor of LEGO by entering an interlocutory decision, confirming defendant’s infringement liability. The IPC will review issue of damages at a later stage.

 

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,109%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c27%2c20210219%2c1   

b-monster’s attempt to register “Boxing b-monster FITNESS STUDIO” is denied due to similarity with “Monster Energy”

On August 19, 2019, b-monster Co. Ltd. (“b-monster”), a gym studio that features “dark boxing” fitness exercise, filed trademark application for “Boxing b-monster FITNESS STUDIO” (Application No. 108054348, see below), intended for use in nutritional supplements under Class 5, such as protein powder, vitamin supplements, enzyme nutritional supplement, etc. 

 

However, b-monster’s application was denied by Taiwan’s IP Office (“TIPO”) on February 9, 2021, because b-monster’s mark is considered similar with Monster Energy’s registered trademarks (Reg. No. 01242825, 01497954, 01713838, and 01497953, see below). 

 

In its determination, TIPO was of the view that:

 

1.     Although there are other decorative drawings presented in b-monster’s mark, TIPO found general consumers, upon seeing such mark, would still focus on “monster”, which is similar with Monster Energy’s aforesaid registered trademarks. Hence, the combination of other elements in b-monster’s mark is insufficient to overcome the impression that “monster” constitutes the main portion of b-monster’s mark. As a result, b-monster’s mark is considered visually and conceptually similar with Monster Energy’s registered trademarks.

 

2.     Monster Energy’s cited trademarks are also applied for use in the same class, covering products like nutritional supplement, meal replacement nutritional supplement, and liquid nutritional supplement. These products serve similar purpose and perform the same function for supplementing nutrition. Thus, TIPO considered b-monster’s mark was applied for use in similar goods. 

 

3.     Further, TIPO noted that in this case, when used as a trademark, “monster” does not relate to the nature, quality, or function of the designated nutritional products. Therefore, TIPO concluded that Monster Energy’s registered trademarks are distinctive, and consumers may use “monster” to identify the source of the provided goods or services. 

 

Since the main distinctive portion of b-monster’s mark is “monster”, and is similar with Monster Energy’s registered trademarks, which are also applied for use in similar goods, TIPO determined that b-monster’s application shall be denied in accordance with Article 30.1.10 of Trademark Law, because the similarity may cause confusion among the relevant public.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K0xESWUxcVl0TzB6dGhkVnFkUE43QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LVM’s “LOCKIT” successful in cancelling “Lockists” in Taiwan’s trademark opposition proceeding

On September 2, 2019, Louis Vuitton Malletier (“LVM”), the trademark registrant of “LOCKIT” (Reg. No. 01578946, see below), filed opposition against “Lockists” (Reg. No. 01992587, also see below), alleging violation of Article 30.1.10 of Trademark Law. 


         

          

The application for “Lockists” was filed on October 19, 2018, designated for use in goods in Class 14, including products such as jewelry, key ring, key chain, metal artwork, bracelets, etc. Taiwan’s IP Office (“TIPO”) granted “Lockists” on June 16, 2019. LVM filed opposition against the registration of “Lockists”, contending such registration will cause confusion with its “LOCKIT” trademark. 

 

On February 9, 2021, TIPO sided with LVM, and ruled that registration of “Lockists” shall be cancelled based on Article 30.1.10 of Trademark Law:

 

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

2.     In terms of similarity, TIPO found both “LOCKIT” and “Lockists” feature the same initial word “lock”, and consist of the same English letters “L”, ”O”, ”C”, ”K”, “I”, and “T”. Thus, consumers with ordinary degree of care would find “LOCKIT” and “Lockists” verbally and visually similar with each other.

3.     As for the similarity of the designated goods, TIPO noted that LVM’s “LOCKIT” was also applied for use in Class 14, including products like jewelry, pearls, rings, earrings, necklaces, pendants, etc., which provide similar decorative function. As a result, TIPO determined that products designated by “Lockists” are similar with those designated by ”LOCKIT”.

4.     With regard to distinctiveness and recognizability, TIPO posited that although “LOCKIT” may be perceived as “lock it”, it does not pertain to the nature or function of its designated products. Hence, TIPO opined that “LOCKIT” shall still be distinctive. In addition, based on the evidence of actual use, TIPO was convinced that in Taiwan consumers are more familiar with LVM’s “LOCKIT” trademark.

 

Given that “LOCKIT” is distinctive and more well-known, and that “Lockists” is similar with “LOCKIT” and applied for use in similar products, TIPO opined that registration of “Lockists” may cause confusion among the relevant public. Thus, “Lockists” was cancelled by TIPO in accordance with Article 30.1.10 of Trademark Law.

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K0xESWUxcVl0TzNiZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office denied trademark application for “Brica” in view of confusion with “BRITA”

On January 28, 2021, Taiwan’s IP Office (“TIPO”) rejected trademark application for “Brica” (application no. 108053240, see below), designated for use in goods under class 11, including household appliance such as coffee machine, hair dryer, water dispenser, beverage machine, etc. 

 

TIPO’s main reasons are that the application violates Article 30.1.11 of Trademark Law, which provides that a mark shall not be registered if such application is similar with other’s well-known trademark, and hence there exists likelihood of confusion on the relevant public, or likelihood of dilution of the distinctiveness or reputation of said well-known trademark. 

 

In this case, TIPO considered “Brica” is confusingly similar with “BRITA”, which is the trademark registered and owned by BRITA GMBH (see below), the worldwide leading company in the water filters and purifiers.

With regard to the well-known status of “BRITA” trademark, based on the publicly available records, such as the worldwide registration records of “BRITA” trademarks, the news coverages, the marketing materials, and the exposure on social media like YouTube, TIPO determined that “BRITA” has become well-known in the field of water filter, filter element, and faucet. Therefore, consumers in Taiwan should be more familiar with the cited trademark “BRITA”.

 

As for similarity, TIPO found “Brica” is visually and verbally similar with “BRITA”, with minor difference in their respective fourth letters, where “Brica” ends with “ca” and “BRITA” ends with “TA”.

 

Turning to the similarity of the designated goods, TIPO noted that the products that “Brica” was applied for use are household appliances that may be used or purchased in association with water filter or purifier, which are the products designated by the well-Known “BRITA” trademarks. For example, in coffee machine, water filter may be used to filter the water, which is later used to brew the coffee. Thus, TIPO determined products designated by “Brica” is similar and associated with the products designated by “BRITA”.

 

Since “Brica” is considered similar with the well-known “BRITA” trademark, and applied for use in similar products, which may cause confusion with the cited well-known trademark, TIPO denied application for “Brica” accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cks1RHlkV0c0UmNaZ1RKRm5UMnZ6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“FOSTER” v.s “NOSTER”: Is there similarity?

On April 15, 2019, CHIESI FARMACEUTICI S.P.A. (“Chiesi”), the Italian pharmaceutical company, filed opposition against NITTO PHARMACEUTICAL INDUSTRIES, LTD. (“Nitto”), alleging that registration of Nitto’s “NOSTER” trademark (Reg. No. 01966235, see below) would cause confusion with Chiesi’s “FOSTER” trademark (Reg. No. 01339137, also see below), which is the brand for its asthma medicine.  

Nitto’s “NOSTER” was filed on April 30, 2018, and granted on January 16, 2019, designated for use in class 1, 3, 5, 16, 29, 30, and 32; and services in class 35, 42, and 44. Chiesi’s opposition focused on goods in class 5, including medicine, medical test paper, medical adhesive tape, sanitary mask, medical capsule, bandages, cotton swabs, dietary foods for medical use, baby food, and nutritional supplement.

 

On January 29, 2021, Taiwan’s IP Office ruled in Nitto’s favor, determining that “NOSTER” is not similar with “FOSTER” and would not cause confusion among the relevant public:

 

1.    Chiesi argued that “NOSTER” shall be cancelled based on Article 30.1.10 of Trademark Law, which provides that a mark shall not be registered if it is similar with a senior mark that is applied for use in similar goods or services, so that there exists likelihood of confusion among the relevant public.

2.    Here, by examining Chiesi’s “FOSTER” and Nitto’s “NOSTER”, TIPO found the two not similar with each other. Unlike “FOSTER”, which is a word with ordinary meaning (i.e., to support or to bring up with care), Nitto’s “NOSTER” has no ordinary meaning. Besides, the pronunciation of the two is also distinguishable due to the difference in their initial letters (“F” v. “N”. ) Thus, TIPO posited that “NOSTER” is dissimilar with “FOSTER”.

3.    As for the similarity in the designated goods, TIPO noted that “FOSTER” is applied for use in pharmaceuticals for human. In this respect, TIPO found some of the goods designated by “NOSTER”, such as “medicine, medical test paper, and medical capsule”, are similar with those designated by “FOSTER”. As for other designated goods like “sanitary mask, cotton swab, and baby food”, TIPO was of the view that they are products for personal hygiene or for infant feeding, which bear little similarity with the goods designated by Chiesi’s “FOSTER”.

4.    Lastly, TIPO found that both trademarks are distinctive, and are actually used in different kinds of products. More specifically, “FOSTER” represents the brand name of Chiesi’s asthma medicine, which is prescriptive medicine adopted by medical centers and hospitals in Taiwan, while Nitto’s “NOSTER” is used for materials of lactic acid bacteria products for metabolism purpose. In view of the difference in product nature, TIPO was further convinced that registration of “NOSTER” will not cause confusion with Chiesi’s “FOSTER”.

Based on the above reasons, TIPO sided with Nitto and denied Chiesi’s trademark opposition.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4STZlQU93QXBqTzVMZVJSb1czUEttQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true