TutorABC prevailed on remand, convincing the court that Jeda’s trademark “eTutor” would cause confusion with its “TutorABC” trademarks

On June 1, 2023, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) overturned determination previously made by Taiwan’s IP Office, finding the trademark “e Tutor” registered by the language learning institute Jeda would cause confusion with TutorABC Inc.’s famous trademarks “TutorABC” (Reg. No. 01281166, 01278886, 01636300, and 01278887), “TutorABC.com” (Reg. No. 01636299), “TutorABCjr” (Reg. No. 01467561), and “TutorMing” (Reg. No. 01355089).

Jeda’s contested trademark, “e Tutor” (Reg. No. 01758049), was filed on June 9, 2015, and granted on March 1, 2016, designated for use in services under class 41, including educational service, training service, vocational training, vocational counselling, consulting service, etc. TutorABC Inc. filed invalidation action on July 7, 2016, citing violation of Trademark Act.

On October 31, 2018, Taiwan’s IP Office (“TIPO”) found in Jeda’s favor, determining that due to the dissimilarity between “e Tutor” and TutorABC Inc.’s aforesaid trademarks, the aforementioned Trademark Act should not be applicable. TIPO agreed that TutorABC Inc.’s trademarks are famous trademarks, and that both parties’ trademarks are applied for use in similar educational services. However, TIPO was of the view that although both Jeda’s and TutorABC Inc.’s trademarks feature “tutor”, ordinary consumers still would not consider them similar with each other. More specifically, in Jeda’s “e Tutor”, the letter “e” is much bigger than the ordinary word “tutor”, and there is another ornamental cloud presented, which, when taking as a whole, could render Jeda’s contested trademark dissimilar with TutorABC Inc.’s cited trademarks.

 

TutorABC Inc. challenged TIPO’s determination in the IPC Court. In the first round, The IPC Court sided with TIPO, finding TutorABC Inc.’s similarity analysis flawed in that TutorABC Inc. inappropriately focused on the common word “tutor” shared by Jeda’s and its cited trademarks, while ignoring all the other presented elements. TutorABC Inc. appealed, and the Supreme Administrative Court (“SAC”) vacated IPC Court’s first ruling on October 27, 2022, determining that while there are variations in Jeda’s and TutorABC Inc.’s cited trademarks, the main impression formed in the consumers’ minds after seeing both parties’ trademarks would still be “tutor”. As such, the SAC posited that “e Tutor” should still be found similar with TutorABC Inc.’s aforesaid trademarks. The case was subsequently remanded back to the IPC Court for further handling in accordance with SAC’s instruction.

 

In its second ruling on June 1, 2023, the IPC Court sided with TutorABC Inc. This time, the IPC Court found TIPO’s determination erroneous.

1.      Although “tutor” is a word with ordinary meaning, such a word may still be distinctive. To this end, the IPC Court affirmed that both Jeda’s and TutorABC Inc.’s trademarks possess distinctiveness, and that TutorABC Inc.’s aforesaid trademarks have achieved the status of well-known trademarks.

2.      As to similarity analysis, the IPC Court followed the path directed by the SAC, considering “tutor” the dominant portion of Jeda’s contested trademark, which would be considered similar with TutorABC Inc.’s aforesaid famous trademarks by ordinary consumers.

3.      Given that TutorABC Inc.’s above trademarks are famous, that both Jeda and TutorABC Inc. provide similar language educational service, and that “e Tutor” is similar with “TutorABC”, the IPC Court concluded that Jeda’s contested trademark should be invalidated due to the likelihood of confusion caused by its similarity with TutorABC Inc.’s famous trademarks.

 

 

Source: 2023 Shin-Shang-Gan-Yi-No. 1 (IPC Court)

https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,111%2c%e8%a1%8c%e5%95%86%e6%9b%b4%e4%b8%80%2c1%2c20230601%2c1

Fashion Giant LV Scores a Win for its famous trademark in opposition against “LN”

In an opposition proceeding initiated by Louis Vuitton Malletier (“LVM”), Taiwan’s IP Office (“TIPO”) found in LVM’s favor, canceling the trademark registration of “LN” for its similarity with the fashion giant’s famous brand “LV”.

 

The opposition was filed by LVM based on its famous trademark “LV” (See below). According to LVM, the registration of “LN” violates Article 30.1.11 of Trademark Act, which provides that a mark shall not be registered if such a mark is identical with or similar to another’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or harm to the reputation of the well-known trademark.

The contested trademark, “LN” (Reg. No. 02218417, see below), was filed by Lion Technology Co. Ltd. on July 16, 2021, and granted on May 1, 2022, designated for use in goods under class 11, including products such as water supplier, water purifier, water cleaning device, water sterilizer, electrolytic water generator, water purification, etc. LVM filed opposition against “LN” on July 25, 2022.

 On June 14, 2023, TIPO sided with LVM, finding that:

 

1.     Based on TIPO’s prior findings, LVM’s asserted trademarks “LV” indeed have been profoundly used by LVM on various kinds of products, including purses, watches, fashionable accessories, apparel, etc., and are well-recognized among the relevant consumers. As such, TIPO affirmed that LVM’s cited trademarks are “well-known” at the time when the contested trademark “LN” was filed for registration in 2021.

2.     TIPO also noted that the contested “LN” trademark composed of two partially overlapping English letters “L” and “N”, which demonstrates similar style and patter presented in LVM’s cited trademark. Although “LN” ends with “N” and “LV” ends with “V”, TIPO considers such difference minor. As such, “LN” is considered visually and conceptually similar with “LV”.

3.     As to the strength of trademark, TIPO again found this factor tilted to LVM’s favor. “LV” is not only a highly distinctive trademark, but has also been used on various kinds of products, including apparel, jewelry, detergents, bleaches, etc. Thus, TIPO is of the view that LVM’s aforesaid famous trademark has been applied for use in diverse products and services, and is likely to be used on products that are similar with or related to products designated by the contested trademark.

4.     In view of the above, since 1) LVM’s trademark is highly distinctive and famous among the relevant public; 2) the contested trademark “LN” is similar with “LV”; 3) the famous trademark “LV” has been used on numerous products that are commonly used in consumers’ daily lives, which are similar with or related to the products designated by the contested trademark “LN”, TIPO determines that the registration of “LN” may cause confusion with LVM’s famous trademark. 

 

In conclusion, the registration of “LN” is canceled by TIPO in accordance with Article 30.1.11 of Trademark Act. 

 

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4L3ZFN1RRT1drV25weE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

DAINESE prevailed in trademark opposition for its “TCX” trademark

In its determination made on May 30, 2023, Taiwan’s IP Office (“TIPO”) sided with Italian prominent brand DAINESE S.P.A. (“DAINESE”), finding DAINESE’s registered “TCX” trademark (see below) will be confused due to registration of “TCXX” trademark.

The contested trademark, “TCXX” (see below), was filed on February 7, 2021, and granted on August 1, 2021 (Reg. No. 02158378), designated for use in goods under class 25, including socks, boots, shirts, sweaters, pants, jackets, etc. DAINESE filed opposition on November 1, 2021, alleging that registration of “TCXX” violates Article 30.1.10, Article 30.1.11, and Article 30.1.12 of Trademark Act.

 

TIPO found in DAINESE’s favor on May 30, 2023, determining that the registration of “TCXX” should be canceled according to 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 identical with or similar to other’s registered trademark; is applied for use in goods or services that are identical with or similar to those for which other’s registered trademark is applied; and hence there exists likelihood of confusion among the relevant consumers.

2.    As to similarity, TIPO noted that although DANIESE’s “TCX” is stylized and has different font size, ordinary consumers could still easily identify it as word consisting of “T”, “C”, and “X”, which is visually and conceptually similar with the contested trademark “TCXX”. The degree of similarity is very high.

3.    TIPO further noted that DAINESE’s “TCX” is designated for use in similar goods, such as slippers, sneakers, sportswear, coats, jackets, etc., which are products that could keep warm and be used in combination with other apparel and related accessories. Thus, TIPO considered both “TCX” and “TCXX” trademarks are applied for use in similar goods.

4.    Based on the records, DENIESE’s “TCX” is distinctive, has been registered in Taiwan since 2007, and is well-recognized among the relevant consumers through DENIESE’s continuous marketing and local distributorship. Since there is no record submitted to support the use of “TCXX”, TIPO found consumers should be more familiar with DENIESE’s “TCX”. 

5.    Given that ”TCXX” is highly similar with “TCX”, that both trademarks are applied for use in similar goods, that “TCX” is distinctive and that consumers are more familiar with “TCX”, TIPO concluded that registration of “TCXX” may cause confusion with DENIESE’s registered “TCX” among the relevant consumers. The registration of “TCXX” is therefore canceled in view of Article 30.1.10 of Trademark Act accordingly. 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Rk94aXpSclN1MDQ0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Tattoo Artists Found Guilty For Using Others’ Copyrighted Works

In a decision rendered on May 17, 2023, Taipei District Court held two tattoo artists liable for copyright infringement by using copyrighted artwork to create tattoo for their customers.

According to the complainants, who are also tattoo artists, the Mandala and flower designs (see below) are all creative artworks that are eligible for copyright protection.

 

The complainants alleged that defendants’ tattoos (see below) are illegal copies created by using the complainants’ aforesaid copyrighted artworks.

 

The defendants contended that the Mandala and flower artworks alleged by the complainants are all natural forms that are too common to be protected as copyrighted work. In addition, the defendants denied any contact with complainant’s works, and argued that the defendants’ tattoos are substantially different from complainants’ works. 

Taipei District Court found for the complainants, reasoning that:

1.    The threshold for copyright protection is not as high as that for patent. The work need not be novel. Instead, a minimum degree of creativity that could reflect the author’s originality would be sufficient.

2.    While Mandala illustrations usually demonstrate similar pattern, i.e., drawn from the central point and surrounded by symbols or decorations that are connected and interrelated, the choice of pattern, color, and configuration may vary, and could demonstrate an artist’s creativity. Similarly, artworks featuring natural forms like flowers may also be eligible for copyright protection, for the style, color, and overall composition of the flower, its pistil, and petal could demonstrate the author’s originality. Here, the Court finds the complainants’ artworks demonstrate sufficient creativity that render the Mandala and flower designs eligible for copyright protection.

3.    As to access of artwork, the Court reasons that while there is no evidence showing direct contact, the facts that both complainants and defendants are tattoo artists, and that both the defendants and complainants would share their tattoo works on social medial like Instagram and Facebook, justify an inference that it is likely that defendants may access complainants artwork via their social media networks.

4.    As to similarity analysis, the Court agrees with the expert’s opinion, finding that the defendants’ tattoos are derivative works based on complainants’ copyrighted artworks. Under the “total-concept-and-feel” test, while there are some differences between defendants’ tattoos and complainants’ artworks, the similarity between defendants’ and complainants’ works is still so high that the Court finds it difficult to believe it is based on defendants’ independent authorship, not copying.

5.    Based on the forgoing reasons, the Court is convinced that the defendants violate Copyright Act by, without complainants’ license, creating derivative works based on complainants’ copyrighted artworks.   

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=TPDM,111%2c%e6%99%ba%e6%98%93%2c27%2c20230517%2c1  

“TeaTok” v. “TikTok”

TIKTOK LTD. (“TIKTOK”), the trademark holder of “TikTok” in Taiwan, prevailed in its opposition against CJ FOOD AND BEVERAGE BEIJING COMPANY LIMITED (“CJ FOOD”), convincing Taiwan’s IP Office (“TIPO”) that consumers would confuse TIKTOK’s famous trademark “TikTok” (see below) with CJ FOOD’s registration of “TeaTok”.

 

CJ FOOD’s trademark, i.e., the contested trademark, “TeaTok” (Reg. No. 02184656, see below), was filed for registration on May 4, 2021, and granted on November 16, 2021, designated for use in various services under class 35 (including marketing, advertising, providing information or consultation for consumer’s purchase of goods or services, advertising on computer network, etc.) and class 43 (including coffee shop, tea shop, ice cream shop, fast food restaurant, etc.). TIKTOK filed opposition against CJ FOOD on February 10, 2022, citing violation of, among the others, Article 30.1.11 of Trademark Act.

 

TIPO ruled in TIKTOK’s favor on May 11, 2023, finding registration of “TeaTok” would cause confusion among the relevant public due to its similarity with “TikTok”:

1.    To begin with, Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark 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 affirmed that “TikTok” as a trademark has achieved the well-known status, given the worldwide popularity of the short-form video platform and its staggering number of monthly active users around the globe (more than 1 billion ). In fact, in its prior determinations, TIPO had agreed that “TikTok” is well-known for social media service.

3.    TIPO also found “TeaTok” visually and verbally similar with “TikTok”, and noted that “TikTok” is highly distinctive and has been used in various kinds of services. For example, by partnering with Shopify in 2021, TIKTOK developed in-app purchase services, making one step further into the market of e-commerce. Users could purchase clothing and other products at TikTok Store. In 2020, by teaming up with POSTMATES, TIKTOK delivered service “TIKTOK TREATS”, in which products like cereal, coffee, and Bento box were available.

4.    In view of the above, although CJ FOOD’s “TeaTok” is designated for use in services like advertising, marketing (class 35) and restaurant (class 43), TIPO found these services are associated with or related to the e-commerce and food delivery service provided by TIKTOK. As such, the relevant consumers may be confused by CJ FOOD’s “TeaTok” due to its high similarity with TIKTOK’s famous “TikTok”.

 

Based on the aforesaid reasons, TIPO determined that CJ FOOD’s “TeaTok” should be canceled in accordance with Article 30.1.11 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4b1ZWSDBaeW9PNmVZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LinkedIn lost in its attempt to cancel a registered trademark that also features “in”

On April 27, 2023, Taiwan’s IP Office (“TIPO”) denied the opposition filed by LinkedIn Corporation (“LinkedIn”), finding LinkedIn’s mark (Reg. No. 0147814, see below) would not be confused or diluted due to the registration of No. 02187223 trademark. 

The registration no. 02187223 trademark, namely, the contested trademark, (see below), was filed by Inline Apps Limited (“Inline”) on June 22, 2021, and granted on December 1, 2021, designated for use in services under class 36, including third party payment service, credit card/ debit card service, banking service, virtual currency, electronic transfer of fund, payment process, etc. LinkedIn filed opposition on March 1, 2022, alleging that the registration of the contested trademark violates Article 30.1.11 of Trademark Act.

LinkedIn alleges that its mark is famous as it is one of the most popular social media platforms, and has more than 740 million registered members from 150 different countries around the world. In Taiwan, LinkedIn registered trademark in as early as 2011, and such trademark has become well-known after LinkedIn’s continuous use in its social media service. LinkedIn argues that since the contested trademark and LinkedIn’s trademark both feature similar word “in”, the contested trademark is highly similar with LinkedIn’s trademark, and that registration of the contested trademark may cause confusion with LinkedIn’s famous trademark.

 

In its determination on April 27, 2023, TIPO sided with Inline, reasoning that:

1.        Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is similar with other’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or reputation of the well-known trademark.

2.        Indeed, both Inline’s trademark and LinkedIn’s trademark feature the word “in”, and both words “in” are embedded in color squares. The contested trademark is thus visually, conceptually, and verbally similar with Linkedin’s trademark.

3.        As to the well-known status of LinkedIn’s trademark, the evidence submitted by Linkedin is insufficient to support a finding in its favor. While according to local news, there are around 2.5 million users registered in Taiwan, there is no data to support such figures. There indeed are news reports covering the popularity of LinkedIn, but LinkedIn’s trademark does not appear in every one of them. In addition, among the Taiwanese between the age of 25-29, only about 2% of them are using LinkedIn’s service. Thus, the evidence submitted by LinkedIn is insufficient to support its statement that its mark is well-known.

4.        “in” is a common word with ordinary meaning. While such word is distinctive when being used in the field of financial or social media service, it is noted that LinkedIn’s trademark is primarily used for social media service, and less in goods and service under class 9, 35, 38, 41, 42, and 45. There is no record showing LinkedIn’s service has actually expanded to other areas.

5.        Although Linkedin argues that Inline’s application is based on bad faith, records show that there are other registered trademarks in Taiwan that use similar word “in” as part of the trademark. Besides, there are still noticeable differences in terms of color and font style between Inline’s and LinkedIn’s trademarks. Based on the records at hand, TIPO does not consider Inline’s application was based on bad faith.

6.    In view of the above, although Inline’s trademark is similar with LinkedIn’s trademark, the evidence submitted by LinkedIn is insufficient to show its trademark is famous among the relevant public. Further, the goods and services designated by LinkedIn’s trademark are different from and unrelated to those designated by the contested trademark, and there is no record showing LinkedIn has expanded its business to service that is similar with or related to Inline’s designated services. Registration of Inline’s contested trademark would not cause confusion with LinkedIn’s trademark. Furthermore, there is no evidence indicating Inline’s use of the contested trademark is based on bad faith or would damage or dilute the distinctiveness of Linkedin’s trademark. Registration of Inline’s contested trademark does not violate Article 30.1.11 of Trademark Act. Hence, LinkedIn’s opposition against Inline should be denied accordingly.

 

Source: 

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RE5GUUNxak1aM3dicXVvMkU2bjludz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

GE prevailed in its trademark opposition against “GREEN ELITE GE”

In its determination on March 31, 2023, Taiwan’s IP Office (“TIPO”) sided with GENERAL ELECTRIC COMPANY (“GE”), finding “GREEN ELITE GE” should be canceled due to likelihood of confusion with GE’s famous trademarks (Reg. No. 00001021,00009344,00066010,00120997,00124108,00124109,00981983,01334183,01334187, see below).

 

The contested trademark, “GREEN ELITE GE” (Reg. No. 02143427, see below), was filed for registration on November 25, 2020, and granted on June 1, 2021, designated for use in goods under class 5, including nutritional supplements, vitamin preparations, food therapy products for medical use, human medicines, traditional Chinese medicines, pesticides, breast pads, freeze-dried food for medical use, medicated soap, medicated oral cleanser, healing candle massage oil, etc. GE filed opposition on August 27, 2021, citing violation of, among the others, Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO found in favor of GE, confirming the registration of the contested trademark may cause confusion with GE’s aforesaid famous trademarks:

 

1.    According to Article 30.1.11 of Trademark Act, a mark shall not be registered if such mark 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.    On whether GE’s trademarks are well-known, TIPO confirms that GE has produced sufficient evidence to support its contention that its trademarks are famous among the general public. Starting from 1950, GE’s products have been adopted and used in a variety of Taiwan’s basic infrastructures. From the illuminating facilities for highway, airport, and railroad systems, to the daily commodities that support countless Taiwan’s households and families, image of GE’s brand has been deeply planted in Taiwanese’s minds, and the general public is familiar with the ”GE” trademarks.

3.    On similarity, TIPO notes that the contested trademark “GREEN ELITE GE” and GE’s cited trademarks “GE” all share the common English letters “G” and “E”, and opines that “GE” and “GREEN ELITE GE” are visually and orally similar with each other. As such, ordinary consumers may find the source of the goods supplied under “GREEN ELITE GE” is the same as or related to the source of the goods supplied under “GE”.

4.    On distinctiveness, TIPO sides with GE and finds that GE’s famous trademarks are more recognizable than “GREEN ELITE GE” and are highly distinctive among the general public in Taiwan. Ordinary consumers are more familiar with GE’s aforesaid famous trademarks.

5.    Further, GE’s product lines are highly diverse. Over the past couple of years, GE’s product territories have expanded from appliances and medical devices to products like disinfectants and diagnostic reagents. Thus, it is likely that GE may enter product field that is similar with or related to that as designated by the contested trademark.

6.    In view of the well-known status of “GE” trademarks, the similarity between “GE” and “GREEN ELITE GE”, the fact that “GE” is highly distinctive and consumers are more familiar with “GE”, and that based on GE’s diverse product lines, GE is likely to supply products that are associated with or related to those as designated by “GREEN ELITE GE”, TIPO determines that the registration of “GREEN ELITE GE” may cause confusion with GE’s famous trademarks in the relevant consumers. As such, the contested trademark should be canceled accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U0hVYzhtSGc4RlhReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true