“bestco” found not similar with “COSTCO” by Taiwan’s IP Office

PRICE COSTCO INTERNATIONAL, INC. (“PCI”), the registrant of “COSTCO” trademarks in Taiwan (Reg. No. 00116362 and 00097655, see below), filed opposition against SINOPACKER INTERNATIONAL INC. (“SINOPACKER”) on August 15, 2019, alleging that SINOPACKER’s “bestco” trademark would cause confusion with PCI’s “COSTCO” trademarks.

SINOPACKER’s “bestco” (Reg. No. 01986500, see below) was filed on October 3, 2018, and granted on May 16, 2019, designated for use in goods under Class 16, including cling film, plastic packaging, plastic bag, toilet paper, paper handkerchiefs, paper containers, office paper, etc. PCI contended that registration of “bestco” violated Article 30.1.10, Article 30.1.11, and Article 30.1.12 of Trademark Law.

On April 29, 2021, Taiwan’s IP Office (“TIPO”) sided with SINOPACKER, finding “bestco” is not confusingly similar with “COSTCO”, and the registration of “bestco” would not damage or dilute the reputation of the famous “COSTCO” trademark:

1.      PCI argued, and TIPO agreed, that the cited trademarks “COSTCO” have been well-known among the relevant consumers in Taiwan after PCI’s successful and continuous marketing. In comparison to the records submitted by PCI, TIPO found there is little evidence supporting the use of SINOPACKER’s “bestco”. Thus, TIPO ruled that PCI’s “COSTCO” is more famous, and the relevant consumers are more familiar with “COSTCO”.

2.      However, when comparing “COSTCO” against “bestco”, TIPO found the two trademarks dissimilar with each other. First of all, the initial two letters of “COSTCO” are “CO”, which are verbally and visually different from those of “bestco”. In addition, the contested trademark “bestco” may be viewed as combination of “best” and “co”, which the consumers may perceive as conveying the meaning of “best company”. Therefore, TIPO determined that “COSTCO” and “bestco” are verbally, visually, and conceptually different from each other.

3.      PCI further argued that SINOPACKER should know its “bestco” is similar with “COSTCO”, because SINOPACKER once tried to register another similar mark “kestco”, but later abandoned that mark after PCI filed opposition. Nonetheless, TIPO held the view that since “bestco” is not similar with “COSTCO”, what SINOPACKER really thought when it abandoned its another trademark “kestco” is irrelevant to the determination of similarity in this case.

4.      Turning to the similarity of goods and services, PCI’s “COSTCO” is applied for use in retail service for grocery, household goods, and office supplies. TIPO noted that the goods designated by SINOPACKER’s “bestco” are usually sold and distributed by the services designated by PCI’s “COSTCO”. Thus, the goods and services designated by the two trademarks are associated with each other.

5.      TIPO was aware of the fact that PCI’s “COSTCO” is distinctive, and has been put in use on various kinds of products and services, such as gas station, optometry, tire inspection, etc. However, SINOPACKER’s “bestco” is also distinctive. Further, there is no evidence of actual confusion among the consumers. Thus, although “COSTCO” is more famous, and “bestco” is also applied for use in goods that are similar or associated with services designated by “COSTCO”, the likelihood of confusion is balanced by other factors, including: the degree of similarity between “bestco” and “COSTCO” is low, “bestco” itself is also a distinctive trademark, and there is no evidence showing actual confusion. As a result, TIPO held the position that the registration of “bestco” would not cause confusion with “COSTCO” among the relevant public.

6.      PCI also argued that registration of “bestco” is out of bad faith with intent to imitate its famous “COSTCO”, and may dilute or damage the distinctiveness of “COSTCO”. TIPO did not side with PCI, because there is no evidence submitted by PCI to prove the registration of “bestco”, a mark that is not similar with “COSTCO”, would necessarily damage or dilute the reputation or distinctiveness of “COSTCO”. Besides, in Taiwan, prior to the filing of SINOPACKER’s “bestco”, there are already trademarks featuring the same word “BESTCO” filed and registered by third party, such as Reg. No. 01104908 (“百事可BESTCO”) and 01112651 (百事可BESTCO). Therefore, it is unreasonable for PCI to argued that SINOPACKER filed application with bad faith simply because its trademark is “bestco”.

 

In view of the above, TIPO determined the registration of “bestco” does not violate the cited Trademark Law, and denied PCI’s opposition accordingly.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cFRTbmVnT280ME0vd240aG9YVEJUUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

 

Note:

Article 30.1.10 of Trademark Law provides that a trademark shall not be registered if such a mark is:

1) identical with or similar to another person’s registered trademark or earlier filed trademark, and

2) 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

3) hence there exists a likelihood of confusion on relevant consumers.

 

Article 30.1.11 of Trademark Law provides that a trademark shall not be registered if such a mark is

1)     identical with or similar to another person’s well-known trademark or mark, and

2)     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 30.1.12 of Trademark Law provides that a trademark shall not be registered if such a mark is:

1)     identical with or similar to another person’s earlier used trademark, and

2)     to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, and

3)   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.

BENTLEY successful in opposition against a highly similar trademark that is applied for use in products that are unrelated to automobile.

 On April 30, 2021, Taiwan’s IP Office (“TIPO”) sided with Bentley Motors Limited (“BML”), ruling that the trademark filed by East Glory Holding Co. Ltd. (“EGHC”) should be cancelled due to likelihood of confusion with BML’s famous “BENTLEY” trademark, even though EGHC’s trademark is designated for use in goods unrelated to automobile or its parts.

 

In as early as 1982, BML had acquired trademark registration in Taiwan for its “BENTLEY” trademark (Reg. No. 00173595, see below), which is designated for use in engine, transmission gear, wheel brake, etc. Through BML’s continuous use and marketing, such as appointing distributorship and establishing service centers, “BENTLEY” has gained wide recognition and popularity in Taiwan’s local market. Thus, TIPO affirmed that BML’s “BENTLEY” has gained the status of a well-known trademark.

 

EGHC’s contested trademark, “BENTLEY” (Reg. No. 02009211, see below), was filed on November 9, 2018, and granted on September 1, 2019, designated for use in goods like vacuum flask, aromatherapy bottle, gloves, etc., which are not related to automobile and its relevant products. BML filed opposition against EGHC on November 29, 2019, alleging that the registration of EGHC’s trademark would cause confusion with BML’s well-known “BENTLEY” trademark. 

TIPO’s determination was in BML’s favor, finding EGHC’s trademark might still cause confusion with BML’s “BENTLEY”:

1.     The main issue here is whether EGHC’s registration violates Article 30.1.11 of Trademark Law, which provides that a mark shall not be registered if such a mark is 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.

2.     As to the status of BML’s “BENTLEY” trademark, TIPO confirmed that before the filing date of EGHC’s contested trademark, BML’s “BENTLEY” is distinctive and has already been famous in products and services that are related to automobile and its parts.

3.     Turning to similarity, TIPO noted that BML’s and EGHC’s trademarks all share the same letters, i.e., “BENTLEY”, with slight variation of font and size. Thus, it is undisputed that EGHC’s trademark is highly similar with BML’s cited trademark.

4.     With regard to the similarity of designated goods, TIPO noted that EGHC’s “BENTLEY” was applied for use in different kind of goods. However, TIPO still found in BML’s favor, because, first, based on the volume of evidence of trademark use, the relevant public is more familiar with BML’s “BENTLEY” trademark; and second, there is sufficient evidence showing that over the years, BML has expanded the use of its “BENTLEY” to products that are not related to automobile, such as watches, necktie, and perfume. As such, it is likely that BML may further expand its product line to the same category as is designated by EGHC’s contested trademark. Even though EGHC’s trademark is applied for use in products that are unrelated to automobile, such difference is neutralized by the facts that consumers are more familiar with BML’s “BENTLEY”, and that BML’s “BENTLEY” has been used in diversified kinds of goods and might one day be used in the same product category.

 

In view of the above, despite there is difference between the designated goods, TIPO finds consumers may still misconceive that EGHC’s contested trademark is associated with BML’s famous “BENTLEY” trademark. Hence, TIPO cancelled EGHC’s trademark in accordance with Article 30.1.11.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4aTRINVB0TDV0L2xGcnhZSjdaSDdGZz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Taiwan’s IP Office finds in favor of CHANEL, ruling “NANACOCO PROFESSIONAL” is confusingly similar with CHANEL’s “COCO” trademarks

 On November 1, 2019, CHANEL filed opposition against “NANACOCO PROFESSIONAL”, a trademark filed by ANNIE International Inc. (“ANNIE”), alleging that the registration of “NANACOCO PROFESSIONAL” would cause confusion with CHANEL’s famous “COCO” trademarks.

 

The contested trademark, “NANACOCO PROFESSIONAL”, was filed on September 19, 2018, and granted on August 1, 2019 (Reg. No. 02000421, see below), designated for use in goods under class 3, including various kinds of cosmetics, and other relevant products like toner, make-up remover, facial cleaner, etc.

 

CHANEL contended that ANNIE’s “NANACOCO PROFESSIONAL” is similar with its trademarks like “COCO” and “COCO MADEMOISELLE” (Reg. No. 00102776, 00438289, 01781763, and 01667227, see below), and is applied for use in similar cosmetics and personal hygiene products. Thus, “NANACOCO PROFESSIONAL” should be cancelled.

 

TIPO sided with CHANEL on March 22, 2021, finding registration of ANNIE’s “NANACOCO PROFESSIONAL” violated Article 30.1.10 of Trademark Act:

 

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if: 1) such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark, and 2) 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 3) hence there exists a likelihood of confusion on relevant consumers.

2.      Here, TIPO notes that since “PROFESSIONAL” is ordinary word that means expert or specialist, it is descriptive and would not constitute the distinctive part of ANNIE’s “NANACOCO PROFESSIONAL”. In other words, ordinary consumers would view “NANACOCO” as the distinctive part of the contested trademark. In this light, as “NANACOCO” contains the same word “COCO” that is also used in CHANEL’s “COCO” and “COCO MADEMOISELLE”, ordinary consumers may find them visually and conceptually similar with each other. However, the degree of similarity is moderate.

3.      As for the designated goods, TIPO finds ANNIE’s “NANACOCO PROFESSIONAL” is applied for use in numerous cosmetics under class 3, which are highly similar with those designated by CHANEL’s “COCO” (for use in perfume, shower gel, and shampoo) and “COCO MADEMOISELLE” (for use in cosmetics, makeup, etc.). Thus, ANNIE’s “NANACOCO PROFESSIONAL” is applied for use in similar products that are designated by CHANEL’s “COCO” and “COCO MADEMOISELLE”.

4.      When it comes to the strength of the trademark, TIPO finds this factor also tilted to CHANEL’s favor, because CHANEL submitted voluminous records showing that by the filing date of ANNIE’s “NANACOCO PROFESSIONAL”, the cited “COCO” and “COCO MADEMOISELLE” trademarks have been famous and well known by the consumers in the relevant cosmetic and fragrance products. Although ANNIE also submitted evidence such as webpage and sales records in support of its trademark use, TIPO finds the cited website less helpful because the website is not operated in Taiwan and has no date of use. Besides, the records also showed that the alleged sale of products was not proceeded in Taiwan. Thus, based on the evidence of trademark use, TIPO determines that consumers are more familiar with CHANEL’s “COCO” and “COCO MADEMOISELLE”.

 

In view of the above, since there is moderate degree of similarity between ANNIE’s “NANACOCO PROFESSIONAL” and CHANEL’s “COCO” and “COCO MADEMOISELLE”, the designated goods of these trademarks are highly similar, and consumers are more familiar with CHANEL’s “COCO” and “COCO MADEMOISELLE”, TIPO determines that the registration of ANNIE’s “NANACOCO PROFESSIONAL” might cause confusion among the relevant consumers. Hence, ANNIE’s trademark “NANACOCO PROFESSIONAL” was cancelled by TIPO based on Article 30.1.10 of Trademark Act.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4TFo4RjBLT0ZuV2F6SE5oSGt0c0hHUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Amazon successful in distinguishing its “Amazon Fuse” trademark from “FUSE” in opposition proceeding.

 On March 24, 2021, Taiwan’s IP Office (“TIPO”) sides with Amazon Technologies Inc. (“Amazon”), finding “Amazon Fuse” not confusingly similar with the cited trademark “FUSE” in trademark opposition proceeding.

 

The challenged trademark, “Amazon Fuse”, was filed for application on February 26, 2018, and granted on June 1, 2019 (Reg. No. 01991639, see below). “Amazon Fuse” is designated for use in goods under class 9, and services under class 35, 38, 40, 41, 42, and 45. On August 27, 2019, the trademark holder of “FUSE” in Taiwan filed opposition against “Amazon Fuse”, citing violation of Article 30.1.10 of Trademark Act.

 

The asserted trademark, “FUSE”, was filed for application on October 13, 2017, and granted on November 1, 2018 (Reg. No. 01948733, see below), designated for use in services under class 35. According to the trademark owner of “FUSE”, Amazon’s “Amazon Fuse” is a similar trademark because it uses the same word “fuse”, and is also applied for use in services under class 35. Thus, Amazon’s registration for services under class 35 shall be cancelled due to violation of Article 30.1.10 of Trademark Act.

 

TIPO found in Amazon’s favor, ruling that the relevant public would not be confused by registration of “Amazon Fuse”:

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

2.      Here, Although the asserted trademark “FUSE” and the challenged trademark “Amazon Fuse” both use the word “fuse”, TIPO notes that “fuse” is an ordinary word that refers to fuze and detonator, so “fuse” as a trademark is not highly distinctive. Since it is undisputed that “Amazon” as a trademark has been well-known by the relevant pubic, “Amazon” should be the main distinctive portion of the challenged trademark, and consumers are more inclined to use “Amazon” to identify the source of the provided services or goods. Thus, while it is likely that ordinary consumers would find “Amazon Fuse” similar with “FUSE”, the degree of similarity should be low.

3.      It is quite common for brand to develop series of trademarks by combining a famous logo that is already well-known by the consumers and a mark that aims to help consumers to distinguish the brand’s different product line. Here, TIPO noted that Amazon is using its already famous trademark “Amazon” together with “Fuse” for the services under class 35, which covers Amazon’s services that consumers are quite familiar with, such as online shopping. Thus, there should be no difficulty for consumers to distinguish “Amazon Fuse” from “FUSE”. Besides, there is little evidence submitted to prove the actual use of “FUSE”, so TIPO finds it difficult to believe that “FUSE” is well-known by the consumers and thus may be confused with Amazon’s “Amazon Fuse” for service under class 35.

4.      As to similarity of the designated services, TIPO finds part of services designated by “Amazon Fuse”, such as advertising, B2B consulting, digital content subscription, online database management, online shopping, inventory management, etc., are similar with those designated by “FUSE”. However, there are other services designated by “Amazon Fuse”, such as rental service for office equipment, computer software, computer hardware, e-book, etc., that are different from services designated by “FUSE.” Therefore, only part of the services designated by “Amazon Fuse” are similar with those by “FUSE”.

 

Given that the degree of similarity is low between “Amazon Fuse” and “FUSE”, that consumers are more familiar with “Amazon Fuse”, and that only part of the designated services of “Amazon Fuse” are similar with those by “FUSE”, TIPO concluded that the registration of “Amazon Fuse” would not cause confusion with “FUSE”. As such, the opposition against “Amazon Fuse” based on Article 30.1.10 of Trademark Act is rejected by TIPO.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UExFS0M2blFZOVhnM1k3cXRXSG5qQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Taiwan’s IP Office denied Hugo Boss’s opposition against “LUCA BOSSI”

HUGO BOSS, the trademark of the German luxury brand, has been very successful in building its worldwide fame and reputation on various kinds of fashion products. In Taiwan, it is not only a luxury brand, but also a well-known registered trademark that has been recognized by Taiwan’s IP Office (TIPO), especially for the products of perfume, clothing, and the relevant accessories. 

 

On September 12, 2019, HUGO BOSS Trademark Management GMBH & CO. KG (“HBTM”), the registrant of series of “HUGO BOSS” trademarks in Taiwan (Reg. No. 467585, 918669, 1086540, 1518580, and 1642229, see below), filed opposition against the registration of “LUCA BOSSI”, arguing that the registration of the opposed trademark would violate Article 30.1.10, and 30.1.11 of Trademark Act.

 

The opposed trademark, “LUCA BOSSI”, featuring a combination of word “LUCA BOSSI” and an icon of shield, was filed on September 4, 2018, and granted on June 16, 2019 (Reg. No. 01991696, see below). 

TIPO did not find in HBTM’s favor. In its decision entered on March 23, 2021, TIPO determined that the registration of “LUCA BOSSI” would not cause confusion among the relevant public, even though HBTM’s cited “HUGO BOSS” trademarks are well-known in Taiwan.

 

TIPO agreed with HBTM that its opposing trademarks, i.e., the cited “HUGO BOSS” trademarks series, have become well-known in the relevant consumers, particularly among the products of apparel, perfume, and the relevant accessories. However, to be subject to Article 30.1.10 and 30.1.11 of Trademark Act, there must be similarity between “HUGO BOSS” and “LUCA BOSSI”, and that such similarity would cause confusion among the relevant public.

 

1.     Here, TIPO found “LUCA BOSSI”, although also displaying the word “BOSSI”, is not similar with HBTM’s cited trademarks in its entirety. TIPO also noted that “BOSS” is a common word and has already been used and registered by numerous co-existing trademarks, such as “SHOE BOSS” (Reg. No. 923941), “KLIN-BOSS” (Reg. No. 969198), “Shining Boss” (Reg. No. 01680678), “BOSSI” (Reg. NO. 01950160),  and “Boss&Juice” (Reg. No. 1086923). Thus, consumers are very familiar with “BOSS”, and would be less likely to use “BOSS” to identify the source of certain goods or services. When seeing “LUCA BOSSI” in its entirety, TIPO found it visually, conceptually, and verbally different from HBTM’s “HUGO BOSS”. Hence,  TIPO held the view that consumers would not be confused simply because “BOSSI” is shown in the opposed trademark. 

2.     As to the designated use of goods, “LUCA BOSSI” was applied for use in goods for class 3, such as air fragrances, and the cited trademarks were applied for use in, among the other, cosmetics, perfume, shampoo, body wash, and soap. TIPO found the purpose, function, and sales channel of goods designated by the two trademarks are obviously not the same or related. 

3.     TIPO further noted that “LUCA BOSSI” is also distinctive. “LUCA BOSSI” is not common word with ordinary meaning , and has no relation with the nature or function of its designated goods (i.e., air fragrance). Thus, it is likely that consumers may distinguish “LUCA BOSSI” from “HUGO BOSS”.

 

In view of the above, since the similarity between “HUGO BOSS” and “LUCA BOSSI” is low, the products that “HUGO BOSS” and “LUCA BOSSI” are applied for use are different in nature, and there is no evidence of actual confusion, TIPO concluded that there would be no confusion caused by the registration of “LUCA BOSSI”. Accordingly, HBTM’s opposition was denied.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RklERi9CYmJDNVRlYU51TmxxQXFXUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

KAO CORPORATION prevails in trademark opposition against “J.KAO”

 On March 25, 2021, Taiwan’s IP Court (“TIPC”) sided with KAO Corporation, the registrant of series of “KAO” trademarks (Reg. No. 388523, 642986, 623793, 01694718, and 01305339, see below), finding registration of “J.KAO” would cause confusion among the relevant public, and affirmed the decision to cancel “J.KAO” entered by Taiwan’s IP Office (“TIPO”).

 

The contested trademark, “J.KAO”, was filed by Big Fun International Co. Ltd. (“Big Fun”) on December 10, 2018, designated for use in goods under class 3, including, among the others, make-up lotion, cosmetic sunscreen, moisturizer, lotion, facial mask, perfume, face cream, etc. The application for “J.KAO” was granted on July 1, 2019. (Reg. No. 01995183, see below)

 

KAO Corporation filed opposition on September 23, 2019, contending that “J.KAO” is confusingly similar with KAO Corporation’s registered “KAO” trademarks, and thus should be cancelled in view of Article 30.1.10 of Trademark Law. TIPO ruled in favor of KAO Corporation on April 17, 2020, finding the registration of “J.KAO” violating the cited Trademark Law. TIPO’s decision was subsequently affirmed by the Appeal Board on July 30, 2020, so Big Fun took this case to TIPC.

 

TIPC’s decision is based on the following reasons:

1.      For Article 30.1.10 of Trademark Law to be applicable, the contested trademark must be found similar with the senior trademark, so that the registration of the contested trademark might cause confusion among the relevant public. 

2.      Here, TIPC found Big Fun’s “J.KAO” and KAO Corporation’s “KAO” all present the word “KAO”, which make them visually similar with each others. Although Big Fun argued that the idea of “J.KAO” is based on the combination of initials of its founder’s name, i.e., “Jean Kao”, TIPC opined that the idea or origin of a trademark is not what ordinary consumers would perceive when seeing the mark. As such, determination of similarity is based on objective observation of “J.KAO”, without regard to Big Fun’s underlying idea when creating the contested trademark. Accordingly, TIPC found “J.KAO” verbally and visually similar with KAO Corporation’s “KAO”.

3.      Turning to similarity of designated goods, Big Fun argued that its trademark is designated for use in goods under class 3, while the designated goods of the cited trademarks are goods under class 6, 2, and 7, which prove they should not be found similar. TIPC disagreed. Although the designated goods are classified under different categories, TIPC noted that KAO Corporation’s cited trademarks were designated for use in goods that provide cleaning, beauty, and skin care functions, such as soap, washing cream, shampoo, conditioner, cosmetics, etc. These products, like those designated by “J.KAO”, are for personal hygiene and beauty use, and should be found similar and associated with each other. Thus, TIPC found “J.KAO” is applied for use in similar products.

4.      Based on the evidence submitted by KAO Corporation, TIPC was convinced that prior to the filing date of “J.KAO”, KAO Corporation’s “KAO” has been used on various kinds of cleaning and cosmetic products, such as “Biore” (for face wash) and “Curel” (for make-up remover), which prove consumers in Taiwan has been quite familiar with the cited trademarks when application for ”J.KAO” was filed. While Big Fun did submit some records showing its “J.KAO” is used on its product, package, and handbag, TIPC found the volume of evidence limited, and the date of use is after the filing date of Big Fun’s “J.KAO”, which is not helpful to prove consumer’s familiarity at the time when “J.KAO” was filed for registration.

In view of the above, since “J.KAO” is similar with “KAO”, and applied for use in similar goods, TIPC found TIPO was correct in finding registration of “J.KAO” might cause confusion with KAO Corporation’s “KAO” trademarks. Thus, TIPC upheld TIPO’s determination and rejected Big Fun’s lawsuit accordingly.

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c99%2c20210325%2c2

“MANGO” beat “mango tree” in trademark opposition proceeding

On February 24, 2021, Taiwan’s IP Office (“TIPO”) cancelled trademark “mangotree芒果樹”, finding it similar with Consolidated Artists BV’s “MANGO” trademark.

 

The cancelled trademark, “mangotree芒果樹”, was filed on January 2, 2019, designated for use in goods under class 14, including jewelry, watches, metal artwork, accessories for earrings, pendant box, etc. The application was granted on May 1, 2020 (Reg. No. 02056120, see below).

Consolidated Artists BV filed opposition against “mangotree芒果樹” on July 30, 2020, contending that the registration of “mangotree芒果樹” would cause confusion with its famous “MANGO” trademark (Reg. No. 01047182, see below).

Taiwan’s IP Office (“TIPO”) found in favor of Consolidated Artists BV, ruling that the registration of “mangotree芒果樹” violates Article 30.1.11 of Trademark Law:

1.     Per Article 30.1.11 of Trademark Law, a mark shall not be registered if such mark is similar with other’s famous trademark and thus may cause confusion among the relevant public, or may harm the reputation or dilute the distinctiveness of other’s famous trademark.

2.     Here, TIPO was convinced that based on the worldwide registration records, news reports, and sales records, the cited “MANGO” trademark is already a well-known trademark in clothing products and the relevant accessories prior to the filing date of “mangotree芒果樹”.

3.     As to similarity, TIPO found the opposed trademark “mangotree芒果樹” also presents “mango”, which is the same word as presented in the cited “MANGO” trademark. Although the opposed trademark further presents “tree” and “芒果樹”, TIPO determined that these additional elements would not make the opposed trademark distinguishable. It is because “tree” is ordinarily language, which is not distinctive, and “芒果樹” also refers to “mango”. As such, ordinary consumers would find “MANGO” conceptually and visually similar with “mangotree芒果樹”. 

4.     TIPO further noted that there is no evidence submitted to support the use of“mangotree芒果樹”. To the contrary, Consolidated Artists BV submitted lots of evidence to support its use of “MANGO” trademark. For example, sales records show that “MANGO” is not only used in apparel, but also used in other products such as jewelry, watches, and glasses. Therefore, TIPO was convinced that “MANGO” as a trademark is widely used in various products, and that the consumers are more familiar with “MANGO” trademark.

 

In light of the above, since “mangotree芒果樹” is quite similar with the famous trademark “MANGO”, and both “MANGO” and “mangotree芒果樹” are applied for use in similar products such as jewelry and its accessories, which provide similar decorative function, TIPO determined that registration of “mangotree芒果樹” may cause confusion among the relevant consumers. Thus, the opposed trademark “mangotree芒果樹” was cancelled based on Article 30.1.11 of Trademark Law. 

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OWxuQnQ1MW44SnBxZXdUQk45Nm5iZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true