SAINT ISLAND INTELLECTUAL PROPERTY GROUP

A Taiwanese company applied to register a trademark containing the wording “Apple Line” and a device in Class 16 (paper products) and Class 18 (bags, leather goods, and umbrellas) in 2007, and the two applications subsequently matured into registrations. Apple Inc. filed opposition actions, alleging, among others, that the registered mark was similar to its famous marks, including “APPLE” and “APPLE logo”. While the Taiwan IPO acknowledged the fame of Apple Inc.’s marks, it did not consider the two parties’ marks to be similar to such an extent as to engender consumer confusion. The IPO expressed that (1) apple is the name of a common fruit, the marks “APPLE” and “APPLE Logo” are not creative and have a low degree of distinctive quality; and (2) since there are various trademark registrations containing the word “apple” or an apple device, consumers may readily discern such trademarks.

The IP Court reversed the IPO’s finding. The IP Court held that although the apple is a common fruit, Apple Inc.’s long-term use of its marks has enhanced the distinctiveness of the marks and made them well known to the general public, and that any person’s attempt to register a similar mark would lead to consumer confusion. The IP Court further observed that the protection a famous mark is entitled should vary depending on the degree of business diversification of the trademark owner. If the owner’s business has crossed over into the junior user’s field, or the mark is very well known to the general public, the protection enjoyed by the mark should not be limited to the goods/services upon which the mark has been registered but should be extended to goods/services of less relevancy. Taking into consideration Apple Inc.’s long-term use of its marks on diverse goods/services that are sold/provided through both physical and online stores and the far-reaching fame of the marks, the IP Court ruled that there is a likelihood of confusion on the part of the relevant public even though the opposed mark is not designated for use on computers or computer peripherals.

It can be observed from the above ruling that the scope of protection a famous mark enjoys in Taiwan depends considerably on the degree of business diversification of the trademark owner, as well as the degree of recognition of the mark.