| Trademark | |||||
| I. How to apply for Metaverse and Non-Fungible Token (NFT) trademarks in Taiwan | |||||
|
The business about Metaverse and Non-Fungible Token (NFT) are crazing people recently owing to the increase of remote business caused by the COVID-19 pandemic in recent two years and the announcement of change of Facebook’s company name to Meta in October 2021. Metaverse and NFT are quite new for people which make us wonder how to apply for the related trademarks and what kind of goods and services they belong to.
There are many trademarks relating to Metaverse or NFT filed or registered by big companies in the USPTO, such as Nike, McDonalds, WalMart, LOREAL and Victorias Secret. The similar situation is also happening in Taiwan and people often question what kind of goods and services they can designate for the Metaverse or NFT related trademark applications in Taiwan. We herewith take the designated goods and services of NIKE’s trademark application in Taiwan as an example for your reference.
International Class 09:
Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds
International Class 35:
Retail store services featuring virtual goods, namely, footwear, clothing, headwear, eyewear sports bags, backpacks, sports equipment, art, toys and accessories for use online; on-line retail store services featuring virtual merchandise, namely, footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories
International Class 41:
Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments
|
|||||
|
II. Trademark Disputes about the Brand Alleged by Victoria Beckham in Taiwan |
|||||
|
|||||
| [Background instruction] | |||||
| 1. | On July 19, 2017, an applicant in Taiwan filed a trademark “VB & device” designating cosmetics related goods in class 03 and registered as No. 01888812. During its opposition period, the trademark was opposed by Ms. Victoria Beckham (the opponent) mainly by the reason that registration No. 01888812 pirated her famous mark “VB”. | ||||
| 2. |
As the opponent had no prior registration in Taiwan, her main grounds of opposition were based on:
Article 30-1-11: A likelihood of confusion based on the well-known trademark; and
Article 30-1-12: Filing of the application in bad faith.
|
||||
| 3. | The TIPO issued the official decision on June 29, 2020 informing that the trademark No. 01888812 should be cancelled. | ||||
| 4. | The registrant filed a petition of Appeal up to the Ministry of Economic Affairs (MOEA) against the Official Decision of the TIPO. The MOEA made a decision that the TIPO should withdraw the former Official Decision. | ||||
| 5. | On December 29, 2021, the TIPO issued a reversed Official Decision and rejected the opposition. | ||||
| [The main refusal reasons about the opposition ] | |||||
| 1. | There was no sufficient evidence proving that the opponent’s “VB” mark was famous in Taiwan. | ||||
| 2. | The opponent’s “VB” mark was not distinctive enough to be a trademark. | ||||
| 3. | There is convincing evidence to prove the creation of the trademark registration No. 01888812 and no intention to pirate of other’s trademark. | ||||
| [Our comments] | |||||
|
Taiwan trademark law adopts territoriality principle and registration protectionism as most of countries do. In principle, trademarks must be registered in Taiwan for being protected. The Trademark Act, Articles 30-1-11 and 30-1-12 are exceptions to registration protectionism which are for helping protect unregistered trademarks in Taiwan under some specific situations. The Article 30-1-11 protects well-known trademarks and the Article 30-1-12 protects trademarks that are used first without filing butregistered in bad faith by others. These two articles can offer protections for famous foreign trademarks which may have not yet been filed for registration in Taiwan.
Although the above two Articles of Trademark Act are also cited by the opponent in this opposition, there are some defects in the evidence of use to cause their failure as we assume. We herewith analyze those defects and the better ways to claim well-known trademarks in Taiwan as follows:
|
|||||
| 1. | The inappropriate prior case raised as an evidence: | ||||
| As one of the evidence for alleging the Article 30-1-12 in this opposition, the opponent cited a prior opposition case as follows in which she successfully cancelled the registration No. 01888792 in Taiwan: | |||||
|
|||||
| Generally, when the Article 30-1-12 is alleged in an opposition application, the opponent provides the evidence of use prior to the filing date of the opposed trademark in any country as a proof. It is not necessary to prove that the opponent’s “VB” trademark has become a well-known one in Taiwan. Therefore, it doesn't mean that the less evidence to win the opposition in such a prior case can be the good example of convincingness. In particular, the situation of the above prior case is totally different from that of this opposition application. In this opposition, the opponent alleged that registration No. 01888812 pirated her famous mark “VB”. The registrant has provided convincing evidence to prove the creation of the trademark registration No. 01888812 and no intention to pirate of other’s trademark. Thus, the above prior case is not a suitable prior case cited as an evidence. | |||||
| 2. | The importance of the date and trademark logo in the evidence: | ||||
| It is very important to indicate the date and trademark logos in the evidence. In addition, the date of use should be prior to the filing date of the opposed trademark. Or, the evidence will be regarded as unqualified one. In this opposition, some of the evidence has either no prior date of use or no trademark logo in the evidence. | |||||
| 3. | The evidence of use should be mainly in Taiwan: | ||||
|
For an opponent from a foreign country to claim a famous trademark, it is necessary to focus on whether the consumers in Taiwan are familiar with it in addition to the international reputation of the trademark. The evidence of use should be mainly in Taiwan.
If the products have not been sold in Taiwan and there is not much evidence of use in Taiwan, it is better to search for popular sites which are discussing the products in Taiwan, such as Youtube, blog articles or purchasing websites. It can prove that although the products have not yet been sold in Taiwan, Taiwan consumers are already quite familiar with the products. Unfortunately, in this opposition, the evidence provided by the opponent failed to prove that the consumers in Taiwan are familiar enough with the opponent’s products with “VB” mark.
|
|||||
| 4. | The registration statuses of the trademark worldwide: | ||||
| It is available to provide the registration status of the trademark worldwide as one of the evidence to prove the fame of the trademark, but it is only an auxiliary evidence. For proving the fame of the opponent’s “VB” trademark, the opponent submitted the registration statuses of the trademark worldwide and claimed that her trademark has been registered in many countries in Europe early since 2002. However, the registered trademarks are not “VB” but “Victoria Beckham” or “VB device” (shown below). Thus, they became unqualified evidence. | |||||
 |
|||||
| 5. | The sales information in not sufficient to prove that the “VB” trademark has become well-known in Taiwan: | ||||
| Whether a trademark is famous and whether consumers are familiar with the trademark, it depends on the actual use thereof in the market. The evidence should focus on the sales-related information, such as advertisements, orders, and invoices that indicate the trademark. The evidence had better be public information, such as online news, introductions in magazines. If it is only a document produced by the right holder, such as a sales list, the credibility and the chance of being accepted are not high. To prove the high sales volume, the trademark holder can submit import declarations and orders in addition to a list of sales statistics. | |||||
| [Conclusion] | |||||
|
To sum up, it totally depends the evidence when claiming a famous trademark. The two most important elements in the evidence are the “trademark logo” and the “date”. The “trademark logo” must be marked on the evidence, and the date of use must be earlier than the filing date of the disputed trademark. If there is not much evidence in Taiwan, it is necessary to focus on online discussion articles, product unboxing articles or videos in Taiwan to prove that people are already quite familiar with the trademark in Taiwan.
|
|||||
|
||