News | Trademark

 Best Seller of Vitamin B Halts Trademark “Free-Riding”

The Japanese company Takeda Pharmaceuticals (“Takeda”) owned a series of registered trademarks, including 合利他命,” “アリナミン” and “ALINAMIN”, which were used on a popular vitamin B complex product. The mark 合利他命” was “ALINAMIN” in four Chinese characters and was pronounced “HeLiTaMin” (hereinafter referred to as the “opposing trademark”).

Takeda discovered sometime in 2019 that a biotech company had registered the following seven word marks (hereinafter referred to as “trademarks in dispute”) under Class 5 of the Nice Classification for dietetic food and substances adapted for medical use: “合利佳好”; “合利眠好”; “合利敏好”; “合利谷好”; “合利晴好”; “合利通好”; and “合利強勇”. These trademarks in dispute were all composed of four (4) Chinese characters, with the first two (2) characters of each trademark (合利) being identical to the first two characters of the opposing trademark. Takeda were concerned that consumers would confuse the products to have all originated from the same source company since the trademarks in dispute were to be used on food supplements with identical or similar ingredients. Furthermore, Takeda suspected that the competitor’s registration of the trademarks in dispute was, out of bad faith, a means of “free-riding” on Takeda’s business goodwill in light of the 合利他命” and “ALINAMIN” trademarks. In response to the above situation, Takeda filed multiple oppositions with TIPO requesting that the registrations of the trademarks in dispute be cancelled.[1]

The adversary responded in brief, emphasizing that their products were not vitamin supplements; rather, they were intended to facilitate the burning of calories in order to prevent obesity. They were never meant to give rise any confusion to the consumers.

TIPO started its analysis by determining whether the opposing trademark 合利他命” had been well-known prior to the filing dates of the trademarks in dispute. As shown in evidence, Takeda established its Taiwanese subsidiary in 1962 and started to register a series of trademarks as early as 1957. Takeda had been continuously commercializing and advertising 合利他命vitamin B products for over six decades, gaining a stable market share of consumers and establishing an extensive sales network. Enjoying widespread popularity, the product of the opposing trademark was available as an over-the-counter (OTC) dietary supplement in almost all pharmacy chain stores. With an average revenue of TWD 236 million, the opposing trademark was ranked as the 2nd best-known vitamin B supplement in the Taiwanese market. Accordingly TIPO recognized the opposing trademark “合利他命as a well-known trademark in the field of pharmaceuticals and nutrition supplements.

TIPO also examined the degree of similarity between Takeda’s opposing trademark and the adversary’s trademarks in dispute. 合利他命had 4 characters and was pronounced “HeLiTaMin”; all of the marks in dispute shared the same first two characters “合利” and are pronounced as “HeLi.” The identical two (2) Chinese characters were aligned in the same arrangement in all of the marks in question. TIPO confirmed that they were similar to the opposing trademark and that the degree of similarity was significant.

TIPO further extended its analysis to include the trademark’s level of distinctiveness. 合利他命 was a Mandarin transliteration of the Japanese “アリナミン”; It did not have any particular meaning in and of itself, and had no connection to medicines or dietary supplements. In TIPO’s trademark registration database, the only valid marks beginning with “合利” and followed by two other Chinese characters were Takeda’s opposing trademark and the marks in dispute. With the “合利他命” trademark having gained a high degree of popularity and familiarity as previously mentioned, people would consider it to be a specific indicator of product origin. Therefore, “合利他命” enjoyed a high level of distinctiveness and should be given greater protection.

Finally, in response to the adversary’s argument, TIPO explained why it was that Takeda’s well-known trademark for vitamins can cause another company’s trademark registration on dietary supplements for obesity to be invalidated. Takeda’s trademark registrations were not limited to medicines or dietary supplements; it had, in fact, acquired registrations for coffee, chocolate, juice, and animal drugs, among other products. TIPO thus did not rule out the possibility that Takeda would further diversify its range of business. Nutrition food for weight loss may certainly be one of the company’s future new products.

To summarize, 合利他命 (ALINAMIN in Chinese characters) and the adversary’s marks in dispute were deemed very similar. 合利他命 was well-known and enjoyed a high level of distinctiveness. It remained highly possible that the range of new products bearing the opposing mark will diversify in the future. TIPO concluded that there would be a continuing likelihood of confusion, were the trademarks in dispute allowed to co-exist with the opposing marks. Oppositions were accepted and the seven trademarks in dispute were therefore cancelled. TIPO’s decisions are still appealable.

[1] Trademark Act, Articles 30(1)(10) and 30(1)(11)





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