On September 12, 2023, Taiwan’s IP Office (“TIPO”)
denied opposition filed by JAGUAR LAND ROVER LIMITED (“JAGUAR”), finding
JAGUAR’s trademarks “DISCOVERY” (reg. no. 01755441 and no. 01728494, see below)
would not be confused by the registration of “DISCOVERY JUNIOR”, the contested
trademark held by DISCOVERY KIDS ENTERTAINMENT LIMITED (“DISCOVERY KIDS”), a
subsidiary of DISCOVERY COMMUNICATIONS, LLC.
The contested trademark, “DISCOVERY JUNIOR”
(reg. no. 02171192, see below), was filed on September 23, 2020, and granted on
September 16, 2021, designated for use in various kinds of goods and services
under class 9 (such as camera, downloadable visual files, smart watch, smart
glasses, downloadable mobile applications, robot with artificial intelligence,
etc.), class 25 (such as apparel, costumes, socks, scarfs, shoes, etc.), class 28
(such as toy figures, puzzles, DIY toy sets, dolls, etc.) , and class 41 (such
as educational service, educational information, book publishing, film production,
etc.) JAGUAR filed opposition against the registration of “DISCOVERY JUNIOR” on
December 10, 2021, alleging that the registration of “DISCOVERY JUNIOR” for
class 28 violates Article 30.1.10 and 30.1.11 of Trademark Act.
In its determination entered on September 12, 2023, TIPO sided with DISCOVERY KIDS:
1.
According to Trademark Act, a
mark shall not be registered if such a 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 (Article
30.1.10). Additionally, a mark shall not be registered if such a 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 (Article 30.1.11).
2.
“Discovery” is a word with
ordinary meaning, and records show that it has been registered as trademark by
others in similar class of goods before the registration date of JAGUAR’s
asserted trademark. Generally, TIPO considers both “DISCOVERY JUNIOR” and “DISCOVERY”
distinctive and could be used as signs to identify the source of products or
services provided.
3.
Based on the records of use of
trademark, including the successful sales of JAGUAR’s “DISCOVERY” RV series, the
continuous media exposure, the operation of HQ and service network in Taiwan,
and the strong support from the community of “DISCOVERY” RV owners, TIPO confirms
that JAGUAR’s “DISCOVERY” has become famous in the field of automobile products
in Taiwan.
4.
On similarity, “DISCOVERY” is included
in both “DISCOVERY” and “DISCOVERY JUNIOR”, but the word “DISCOVERY” is a
common vocabulary with ordinary meaning, with which consumers are already familiar.
Besides, the word “DISCOVERY JUNIOR” carries the meaning of “young explorer”, but
“DISCOVERY” simply means “exploration”. The meanings of the two trademarks are
thus noticeably different. Further, the visual appearance and pronunciation of
the two trademarks are also different. TIPO opines the degree of similarity between
“DISCOVERY” and “DISCOVERY JUNIOR” is, at most, medium.
5.
TIPO agrees that both “DISCOVERY”
and “DISCOVERY JUNIOR” are applied for use on similar goods under class 28.
However, TIPO found no records that could support the finding that JAGUAR’s “DISCOVERY”
has been used and become famous in the field of toy products prior to the filing
date of “DISCOVERY JUNIOR”. Plus, there is no evidence showing JAGUAR has used “DISCOVERY”
in developing other product line. It is uncertain that in toy market consumers would
be more familiar with JAGUAR’s “DISCOVERY” than DISCOVERY KIDS’ “DISCOVERY JUNIOR”
6.
In view of the above, in terms
of Article 30.1.10, TIPO concludes that although JAGUAR’s “DISCOVERY” and DISCOVERY
KIDS’ “DISCOVERY JUNIOR” are applied for use in the same class of goods, consumers
should be well-educated enough to discern JAGUAR’s “DISCOVERY” from DISCOVERY
KIDS’ “DISCOVERY JUNIOR” because the word “DISCOVERY” has been commonly used by
other registered trademarks in the same class of goods. Based on the visual,
conceptual, and verbal differences, TIPO finds there should be no likelihood of
confusion between JAGUAR’s “DISCOVERY” and DISCOVERY KIDS’ “DISCOVERY JUNIOR”.
7.
In terms of Article 30.1.11,
TIPO opines that while JAGUAR’s “DISCOVERY” is famous in the field of
automobile industry, there is no sign showing JAGUAR has put “DISCOVERY” in use
on toy or other types of products. On the other hand, TIPO notes that evidence
shows that “DISCOVERY” as trademark has been widely used by other companies,
and there are various kinds of trademarks featuring “discovery” that have coexisted
with each other across various types of products and services in Taiwan. Thus,
consumers should be able to discern the source of goods and services when faced
with trademarks featuring the word “discovery”. As JAGUAR produced no evidence
proving DISCOVERY KIDs’ bad faith in mimicking JAGUAR’s famous trademark or
actual confusion has been caused due to the registration of the contested
trademark, TIPO determines that the registration of “DISCOVERY JUNIOR” will not
dilute or harm the distinctiveness or reputation of JAGUAR’s “DISCOVERY”
trademark.
Based on the reasons above, JAGUAR’s opposition
against “DISCOVERY JUNIOR” is denied accordingly.
Source:
https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZTQ4aXVoNDRkVlV6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true
