Regular readers of our articles will know that we enjoy reviewing and discussing cases dealing with confusingly similar trade marks from around the globe. This time around, we discuss two interesting cases in Taiwan.
Case one – Apple and Xipulin
A Chinese company, Beijing Xipulin Trading Co Ltd ("Xipulin"), filed an application in Taiwan to register a pen device trade mark. The application was filed on 1 April 2022 and it covered goods in class 9, including laptops, computers, computer hardware, computer software, computer tablets, smartphones, mobile phone apps, headphones, cameras and so much more. An image of the pen device trade mark is set out below:
The US company - Apple
Apple Inc. filed an opposition against Xipulin's trade mark application on the basis of confusing similarity with two of its trade mark registrations set out below:
The IP Office's finding
On 2 August 2024, the Taiwanese Intellectual Property office ("TIPO") found in favour of Apple. It ordered the refusal of Xipulin's trade mark application on the basis that it was confusingly similar to Apple's trade marks. TIPO's reasoning was as follows:
Taiwan's Trademarks Act is pretty clear: The relevant section of the legislation says that an application will be refused if it is (this would be a good time to take a deep breath) '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'.
A pen's a pen surely: TIPO came to the conclusion that, although there are clear differences between the pens, the differences are not such that consumers would easily distinguish the trade marks. The average consumer would be of the view that the trade marks are visually and conceptually similar.
The products are much of a muchness: TIPO held that the trade marks are or will be used for similar products. The products covered by the two trade marks are of 'similar nature, function, and share related purposes'.
Distinctiveness: TIPO acknowledged that Apple's trade marks are 'highly distinctive', and that they are easily recognized by the relevant consumers. The Apple trade marks are, as a result of extensive news reporting and media coverage, famous!
So something of a slam dunk!
Case two - Cocodor
In 2023, a Taiwanese company, Cocodor Taiwan Co. Ltd, filed an application in Taiwan to register the trade mark COCODOR in class 3 - the application covered a range of goods including 'perfume, fragrance, essential oil, lotion, hand cream, skin care products, shampoo, conditioner, shower gel'. TIPO refused the trade mark application on the basis of confusing similarity with the well-known trade mark COCO belonging to Chanel.
The TIPO took a number of factors into account:
- Article 30.1.10 of the Trademark Act provides that a trade mark will be refused if it is the same as or similar to an earlier trade mark for similar goods... (if this is already starting to sound familiar, it's because it's exactly what we said earlier under the heading APPLE, Taiwan's Trademark Act is pretty clear.)
- The fact that the trade mark COCODOR features the prefix COCO makes it 'verbally and visually similar with Chanel's cited trademarks COCO'. COCO is clearly the 'dominant portion of both trademarks' and consumers will be 'inclined to find them similar with each other'.
- Both parties sell products that 'clean the human body or improve personal beauty'. Consumer confusion is therefore likely.
- Based on evidence of trade mark use, TIPO found that Chanel's COCO trade marks are well-known amongst consumers in fields such as perfumery and cosmetics, as well as fashionable apparel, leathers and the like. COCO trademarks are 'highly recognizable' and consumers are 'familiar' with them.
- Given the visual and verbal similarities between the trade marks COCO and COCODOR, the similarities in the products, and the fact that COCO trade marks are well known, consumer confusion is almost a certainty.
Another one-sided affair!
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