On October 24, 2024, Taiwan’s IP Office (“TIPO”) ruled in the favor of RICHEMONT INTERNATIONAL SA (“RICHEMONT”), finding the contested trademark “DWC ETERNITY” should be canceled for likelihood of confusion with RICHEMONT’s well-known “IWC” (no. 00035143 and no. 00916674, see below).
The application
for the contested trademark, “DWC ETERNITY” (no. 02275511, see below), was
filed on July 15, 2022, and granted on January 16, 2023, designated for use in
goods under class 14, including jewelry, watches, bracelets, watch boxes, etc. RICHEMONT
filed opposition on April 14, 2023, citing violations of Articles 30.1.10, 30.1.11,
and 30.1.12 of Trademark Act.
TIPO
ruled in favor of RICHEMONT based on Article 30.1.11, determining that:
1.
Article
30.1.11 of Trademark Act provides that a mark shall not be registered if such a
mark is “identical with or similar to another person’s well-known trademark or
mark, and hence there exists a likelihood of confusion on the relevant public
or a likelihood of dilution of the distinctiveness or reputation of the said
well-known trademark or mark”.
2.
Based
on the evidence provided by RICHEMONT, including the records of global trademark
registrations of “IWC”, the continuous coverage and exposure of “IWC” watches in
reputable publications like “VOGUE”, “PRESTIGE”, and TIPO’s own prior
determination, TIPO opines that as of the filing date of the contested trademark,
RICHEMONT’s “IWC” has become well-known among the relevant consumers.
3.
In
terms of similarity, while the contested trademark consists of “ETERNITY” and “DWC”,
TIPO finds ordinary consumers would regard “DWC” as the dominant portion. In
this context, “DWC” and “IWC” indeed share visual and phonetic similarities. Overall,
the contested trademark, in its entirety, is still visually and verbally similar
to RICHEMONT’s “IWC”.
4.
Additionally,
TIPO notes that the contested trademark is applied for use in goods that are
similar or closely related to those covered by RICHEMONT’s well-known “IWC”
trademark, such as watches and the relevant accessories. For example, it is
common for luxury watches to be adorned with jewelry and marketed as fashionable
products.
5. Given that “DWC ETERNITY” is similar to “IWC” and used in similar watch products, that “IWC” is highly distinctive and well-known, that “IWC” is more recognizable among the relevant consumers, TIPO concludes that the registration of “DWC ETERNITY” may cause confusion with RICHEMONT’s famous “IWC” trademark.
In view of the above, the contested trademark was canceled by TIPO accordingly.
Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bk5OZ0k5aWMyVjJ0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true