Infringer ordered to pay TWD2.5 million for infringement on iROO mark

　iROO International Co., Ltd. (hereinafter “iROO International”), the proprietor of the iROO mark sued Wei I International Development Co., Ltd. (hereinafter “Wei I”) for trademark infringement by using “AROO” as a trademark for  its gym clothes.  According to iROO International, by using “AROO” as a trademark and engaging in the business of gym clothes, Wei I has caused consumers confusion because “AROO” mark is highly similar to iROO International’s iROO mark.  In this regard, iROO International filed the lawsuit against Wei I to demand that Wei I should stop using “AROO” as a trademark, have its domain name registration cancelled, and also pay TWD2.5 million as damages.  

　iROO International filed the lawsuit with the Intellectual Property and Commercial Court (hereinafter “IPC Court”), and the IPC Court decided on this lawsuit with the following holding:  

　Compared with the iROO mark, “AROO” mark is almost identical to the iROO mark with only one difference in their respective initial letters (“A” and “I”).  Also, the initial letter, “i” , of the iROO mark is in italics that creates a similar visual effect with the capital letter “A” in “AROO” mark, and hence, they are slightly different from each other.  In addition, both the iROO mark and “AROO” mark are not existing vocabularies in English and both carry no specific meaning, and thus, they are distinctive.  In addition to the foregoing similarities, the English-Chinese transliteration of the iROO mark is “yi-lu” or “ai-lu”, which is also similar to the transliteration of “AROO”.  In view of the foregoing, the iROO mark and “AROO” mark are highly similar in their appearance and pronunciation.  

　In addition, due to the fact that Wei I uses “AROO” mark in its domain name, on its website, Shopee, Facebook, Instagram, Youtube, and its products, and the iROO mark is designated for use on sportswear, for clothing accessory retailing and presentation of goods on communication media for retail purposes, online shopping, and for providing commercial information and advice for consumers in the choice of products and services, the nature, function, use, material, manufacturer, marketing channel or venue, and consumer group of the iROO mark and “AROO” mark are in common or in relevance.  As such, if use of two identical or similar marks on goods or services would cause general consumers to mistakenly believe that the goods or services are from identical or relevant sources, the designated goods or services of the two marks must be highly similar.  

　Moreover, as indicated in the evidence produced by iROO International proving the occurrence of consumers confusion, indeed there have been consumers raising the following questions on iROO International’s FB page:  “Can I use AROO discount code on your official website?” and “Are there any other base layers that are similar to that in the pictures and can go with AROO gym clothes for women?”.  Based on the foregoing facts, the IPC Court made the following comprehensive conclusions that (a) the “AROO” mark and the iROO mark are highly similar to each other with only slight differences in their respective overall appearance and pronunciation, (b) their respective designated goods or services are identical or highly similar, and hence, would cause consumers confusion, and thus (c) Wei I’s use of the “AROO” mark on its sportswear and for the service of sale of sportswear indeed has caused relevant consumers to mistakenly believe that the iROO mark and “AROO” mark represent the same source or that the users of the two marks are affiliate companies or are in the licensor-licensee, franchisor-franchisee, or any other similar relationships.  In view of the foregoing, the IPC Court determined and sustained the likelihood of confusion as alleged by iROO International.  

　In light of the foregoing, the IPC Court adjudicated that (a) Wei I shall not use the “AROO” mark on garments and for clothing accessories retailing or any other similar goods or services and shall not use the “AROO” mark on the commercial documents or advertisements relating to the aforesaid goods or services nor in the manners of digital AV, electronic media, the Internet or any other media, (b) prior use of the “AROO” mark, if any, should be removed, (c) Wei shall have its domain registration of “aroo.com.tw” cancelled, and (d) Wei I shall not use any words similar or identical to the iROO mark as a specific part of its website name, domain name, account name of e-commerce platform, social media account name, and (d) Wei I and other defendants shall severally and jointly pay iROO International TWD2.5 million as damages.  (Released 2023.03.14)  
/CCS