“NIVEA” prevailed in trademark opposition against “NEVA”

On May 28, 2025, Taiwan’s IP Office (“TIPO”) sided with BEIERSDORF AG, cancelling the contested trademark “NEVA” for its similarity with the well-known German skin care brand “NIVEA” (No. 0039212, No. 0384064, No. 01316235, No. 01790601, No.01521516, and No. 02252012, all see below ).

The contested trademark, “NEVA” (No. 02394613, see below), was filed on January 12, 2024 by a Shenzhen-based company Mun-Chia-Fan Tech. Ltd. (“MCF”), and was granted on August 16, 2024. It covered goods in Class 3, including moisturizing lotion, detergent, cosmetics, fragrance, toothpaste, beauty mask, etc. BEIERSDORF filed opposition on November 12, 2024, citing violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in the favor of “NIVEA”, cancelling “NEVA” based on Article 30.1.11 of Trademark Act. Its reasoning was as follows:

1.        Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is similar to another person’s well-known trademark or mark, and hence there exists likelihood of confusion among the relevant consumers, or likelihood of dilution of distinctiveness or harm to the reputation of such well-known trademark or mark.

2.        Here, TIPO noted that BEIERSDORF’s “NIVEA” has been recognized as a well-known trademark in several TIPO’s prior determinations in 2019 and 2022. Besides, in 2019, the well-known status of “NIVEA” was also affirmed by Taiwan’s Intellectual Property and Commercial Court. According to the evidence of use, TIPO also found that BEIERSDORF has been continuously using “NIVEA” in the sale and promotion of its skin and body care products. TIPO thus was convinced that “NIVEA” was already well-known in the fields of cosmetics and skin care products when MCF filed the contested trademark.

3.        On similarity, TIPO found the contested trademark visually and phonetically similar to BEIERSDORF’s “NIVEA”. Both feature the same letters “N”, E“, “V”, and “A”, start with letter “N” and end with letter “A”, and share similar structure, sequence, and pronunciation.

4.        Considering the well-known status and inherent distinctiveness of “NIVEA”, TIPO opined BEIERSDORF’s should be more recognizable among the relevant consumers. To the contrary, MCF did not submit any evidence of trademark use to demonstrate the fame of its contested trademark.

5.        Although the designated products were not totally identical, TIPO found them related. For example, moisturizing lotion, fragrance, beauty mask, and cosmetics covered by the “NEVA” trademark serve personal hygiene and beauty purposes, which overlap with the product scope covered by the well-known “NIVEA”.

In view of the above, TIPO concluded that given the well-known status of “NIVEA”, the similarity between “NIVEA” and “NEVA”, the strong brand recognition of “NIVEA”, and the overlap of designated products, registration of “NEVA” could cause confusion. Thus, the contested trademark was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhCc4Sp%2FsNOwxunMAXU2dCAMkA%2BXXx

Agnes B Wins Trademark Opposition in Taiwan

In a trademark opposition filed by Agnes B, Taiwan’s IP Office (“TIPO”) ruled in favor of the French fashion brand, finding the contested trademark, which features a cursive “l” letter, to be too similar to Agnes B’s iconic “b” signatures (no. 00864444, no. 00542007, no. 00820058, and no. 01471708, see below).

The contested trademark, no. 02335495 (see below), was filed by LOVFEE, a Taiwan-based apparel brand on May 4, 2023, and was granted on November 16, 2023. It was registered in Class 25, covering various kinds of clothing and accessories, such as coats, sweaters, skirts, hats, T-shirts, scarves, etc. Agnes B filed opposition on January 15, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO ruled in Agnes B’s favor on May 29, 2025 based on Article 30.1.10, reasoning that:

1.        Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is similar to another’s registered trademark, is applied for use on similar products or services, and is likely to cause confusion among the relevant consumers. 

2.        On similarity of the trademark, the contested trademark consisted of a cursive letter “l” and a “heart” icon. Agnes B’s cited trademarks featured a cursive letter “b”. When comparing the overall style and structure, the cursive letter “l” bears visual similarity with the stylized “b” logo, which constitutes the dominant portion of Agnes B’s trademarks. The way the cursive “l” was written, such as the style and contour of its curve, closely resembles Agnes B’s “b” signatures. 

3.        On similarity of the product, the cited trademarks were also designated for use in Class 25 (including apparel, shoes, and accessories such as belts, hats); and in Class 35 (including the retails services for clothing, shoes, and other accessories). The scope of the designated products of the contested trademark overlaps with those covered by Agnes B’s “b” signatures. 

4.        Moreover, Agnes B’s cited trademarks are inherently distinctive. Based on evidence of continuous trademark use throughout the period of 2011-2023, the iconic “b” signatures have become well-known in the relevant consumers in Taiwan. In fact, the well-known status of the “b” signatures has been reviewed and consistently confirmed in other trademarks oppositions. Therefore, consumers should be more familiar with Agnes B’s trademarks.

In view of the above, given the similarity between Agnes B’s and LOVFEE’s trademarks, the overlap of the designated products, and the high distinctiveness and strong brand recognition of Agnes B’s “b” signatures, TIPO concluded that the registration of LOVFEE’s contested trademark may cause confusion. Thus, the contested trademark was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhBsYWoPtrYyQmZodywSs1Dr26Tofw

Taiwan’s IP Office sided with Nike in trademark dispute over tick design

On April 29, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of sportswear giant Nike in its trademark opposition against trademark no. 02408725, citing a likelihood of confusion with Nike’s iconic swoosh designs (no. 00116848, no. 00063401, and no.00121534, see below ).

The contested trademark, 02408725, see below, was filed on March 25, 2024, and registered on October 16, 2024, designated for use in goods in Class 25, including clothing, shoes, sandals, slippers, leather shoes, hats, socks, etc. Nike filed opposition on January 16, 2025, alleging violations of Article 30.1.10 and 30.1.11 of Trademark Act.

The TIPO sided with Nike on April 29, 2025, cancelling the contested trademark based on Article 30.1.10 of Trademark Act:

1.        Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is similar to a prior registered trademark, is used on similar goods or services, and therefore may cause confusion among the relevant consumers. 

2.        On similarity, TIPO noted that both the contested trademark and Nike’s trademarks featured tick-shaped symbols. Although the colors and shapes of the tick marks were different, and there were three small ball icons embedded in the contested trademark, TIPO still considered the overall visual impression of the contested trademark similar to Nike’s swoosh icons.

3.        On the designated products, TIPO found that the Nike’s trademarks also cover products like sneakers, socks, slippers, hats, and boots, which share similar purposes and functions with the goods covered by the contested trademark. Therefore, the designated products of the contested trademark resemble those of Nike’s trademarks.

4.        On the strength of the trademarks, TIPO recognized Nike’s swoosh design as inherently distinctive. Besides, the records submitted by Nike were sufficient to show that its trademarks have established strong recognition in the relevant consumers. Moreover, in a number of its prior determinations, TIPO already found Nike’s swoosh trademarks well-known in connection with shoes, footwear, and apparel. Consumers should be more familiar with Nike’s swoosh trademarks.

5.        In sum, give that there is similarity between the trademarks, the overlap of the designated goods overlap, the distinctiveness and strong recognition of Nike’s swoosh marks, TIPO concluded that registration of the contested trademark is likely to cause confusion among relevant consumers. 

As a result, the contested trademark was cancelled based on Article 30.1.10 of Trademark Act. 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOgCccdpftC3toJ1P3HSeoLBp%2FVtAs%2F

Taiwan’s IP Office Sides with TWG Tea in Trademark Dispute

On May 1, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of popular tea brand TWG Tea, finding the contested trademark, although designated for use in different product categories, may still cause confusion with the well-known “TWG” trademarks (See below).

The contested trademark, “TWG” (no. 02410921, see below), was filed on April 21, 2024, and granted on November 1, 2024, covering products in Class 3, including facial cleansers, bath gel, soap, shampoo, hair conditioners, facial cream, lipsticks, body lotion, skin care products, etc. TWG TEA filed opposition on January 24, 2025, citing, among other grounds, violation of Article 30.1.11 of Trademark Act.

TIPO ruled in TWG Tea’s favor based on the following reasons:

1.      Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is being 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.      Here, based on the submitted evidence, including the development of physical stores in Taiwan, worldwide trademark registrations of “TWG”, and the continuous and ongoing media exposure and marketing between 2009 and 2020, including the joint campaigns with other cosmetic brands like Shiseido, TIPO affirmed that TWG Tea’s “TWG” trademarks had become well-known in the fields of tea, tea drinks, and relevant beverage services before the filing date of the contested trademark. On the other hand, given that the registrant of the contested trademark did not submit any evidence of use, TIPO considered the consumers are more familiar with TWG Tea’s trademarks.

3.      TIPO noted that the contested trademark consisted of the letters “TWG”, which are identical to the dominant wording in TEA TWG’s cited trademarks. It is evident that the contested trademark is highly similar to TWG Tea’s famous “TWG” trademarks.

4.      Although the contested trademark was designated for use in different product categories, TIPO observed that, in addition to relevant products like teapots, tea trays, and tea spoons, there were records showing that TWG Tea had collaborated with other cosmetic brands to promote products like fragrances, essences, and skin care items. Thus, TWG Tea is likely to expand its brand into cosmetic products.

5.      In view of the well-known status of “TWG”, the high degree of similarity, the familiarity of TWG Tea’s brand, and the diversification of merchandise, TIPO concluded that the contested trademark, even though designated for cosmetic products, may still cause confusion with TWG Tea’s famous trademarks. Thus, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhAc4QpvuDYGofCIPD1Q0MnIie8SsY

Lacoste loses trademark cancellation case in Taiwan

On May 2, 2025, Taiwan’s IP Office (“TIPO”) denied Lacoste’s cancellation action against Full Moon Brewworks Co. Ltd. (“Full Moon”), finding Full Moon’s contested trademark, although featuring a crocodile, not confusingly similar to Lacoste’s iconic crocodile logos (No. 00341288, No. 00353746, No. 00636650, and No. 02342889, see below).

The contested trademark, “CHA LAN WAN PALE ALE & device” (No. 02348419, see below), was filed by Full Moon, a beer brewery based in Thailand, on March 22, 2023. Full Moon’s application was granted on January 1, 2024, covering goods in Class 32, including various kinds of beers and beverages, such as dark beers, draft beers, non-alcoholic beers, lemon beers, sparkling water, soft drinks, malt drinks, etc. Lacoste filed cancellation on April 1, 2024, citing violation of Article 30.1.11 of Trademark Act.

TIPO entered its decision on May 2, 2025, finding low similarity and thus no confusion between Lacoste’s and Full Moon’s trademarks.

1.     TIPO first reviewed Lacoste’s evidence for supporting the alleged well-know status of its trademarks. While TIPO noted that Lacoste’s trademarks were once determined as well-known in 2009 and 2016 in the field of apparel, hats, and the relevant accessories, TIPO found the evidence was more than 7 years ago. On the other hand, the other records submitted by Lacoste merely showed it has been continuously using its trademarks in Taiwan. There is no other supporting evidence, such as advertising data, market share survey report, etc. As such, TIPO considered the reputation of Lacoste’s trademarks is limited and confined to the clothing sector.

2.     As to the similarity, TIPO was aware that both Full Moon’s and Lacoste’s trademarks include crocodile imagery. However, crocodile is merely a common animal, and TIPO noted that there are other elements in Full Moon’s trademark, such as “CHA LAN WAN” (which means king of crocodile in Thai), and the depiction of a woman in short skirt being embraced by the standing crocodile. Taking all the elements together as a whole, TIPO considered that consumers should be able to distinguish the two trademarks, and the similarity should be low.

3.     While TIPO agreed that Lacoste’s trademarks are distinctive and were used on other products, such as surfboard, bicycle, etc., TIPO found the evidence quite limited. TIPO considered these materials insufficient to prove a natural brand extension into beer and beverages. In the meantime, Full Moon’s trademark is also distinctive, since it is not related to the nature or function of the designated products.

4.     In light of the above, TIPO concluded that the fame of Lacoste’s trademarks is limited to clothing sector, that the similarity is low, that both trademarks are distinctive, and that there is no evidence showing Lacoste is likely to expand into the beer and beverages market. Accordingly, TIPO held that the registration of Full Moon’s trademark is unlikely to cause confusion among the relevant consumers. In addition, since the degree of similarity is very low, TIPO determined that the contested trademark is unlikely to dilute the distinctiveness or tarnish the reputation of Lacoste’s trademarks. 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhAcwWoPuNYcb%2FbiVdG3GLhNqFuL2w

Prada prevailed in Petitions and Appeals Committee for its “MIU MIU” trademark

On May 14, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (“Committee”) affirmed the determination of Taiwan’s Intellectual Property Office (“TIPO”), finding the contested trademark “NIUNIU” may cause confusion with Prada’s iconic brand “MIU MIU” (No. 00163308 and No. 00836654, see below).

The contested trademark, “NIUNIU” (No. 02256501, see below) was filed on March 7, 2022, and granted on October 16, 2022, designated for use in goods in Class 25, including various kinds of underwear and accessories, such as bras, corsets, heating garments, women’s apparel, lingerie, etc. 

Prada filed opposition against “NIUNIU” on January 13, 2023, contending that registration of “NIUNIU” would cause confusion with its famous “MIU MIU” trademark. TIPO sided with Prada on December 31, 2024, finding “NIUNIU” confusingly similar to Prada’s “MIU MIU” trademark, and ordering cancellation of “NIUNIU” based on Article 30.1.10 of Trademark Act. Registrant of “NIUNIU” appealed, arguing TIPO was erroneous in finding similarity between the two trademarks, that the sales channels and targeted customers of “NIUNIU” are different, and that consumers should be able to distinguish the two trademarks given that “NIUNIU” has become a popular brand.

The Committee upheld TIPO’s decision, finding no error in TIPO’s determination:

1.        On similarity, the Committee ruled that both trademarks are made up by two same words, with minor differences in the font, space, and the initial letters. Besides, pronunciations of letters “N” and “M” both require nasal sound. The Committee found that TIPO was correct in finding visual and verbal similarity between “NIUNIU” and “MIU MIU.”

2.        On similarity of designated products, “MIU MIU” were designated for apparel, footwear, and the relevant accessories, which serve functions or purposes that are related to or overlapping with those of designated products of “NIUNIU”. While the registrant of “NIUNIU” argued that the sales channels of “NUINIU” are on-line network, and the products of “MIU MIU” are mainly supplied in physical stores, such variance is not sufficient to negate the relevancy of the designated products between the two trademarks. Besides, Prada did submit evidence showing that its products are also available via online store, the Committee found TIPO committed no error in its decision.

3.        The Committee further noted that there was voluminous evidence supporting the well-known status of “MIU MIU”, and agreed that on the filing date of “NIUNIU”, “MIU MIU” as a trademark has been well-known. The registrant argued that its “NIUNIU”, similarly, is famous among the relevant consumers. The Committee disagreed, determining that the evidence produced by “NIUNIU” lacked the backing of evidence like market share, sales revenue, and invoices. Thus, the Committee ruled that consumers should be more familiar with “MIU MIU”, and that Prada’s cited trademark should be awarded with greater protection than “NIU NIU”. 

4.        In view of the above, given the similarities of trademarks, relatedness of the designated products, fame of “MIU MIU”, and consumers’ familiarity, the Committee concluded that TIPO was correct in finding likelihood of confusion between “NIUNIU” and “MIU MIU”. TIPO’s determination was therefore upheld by the Committee.

 

Source: 

The Committee’s decision

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250524_decisionDownload-A211401030_175321_611_GYwd22c8xC/

TIPO’s decision: 

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNWI%2BOrAMwco%2FunxmxCMXMZuTh2cgQ44wqH

Ralph Lauren Wins in Taiwan Against Parallel Importer for Unfair Free-Riding

On April 30, 2025, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) ruled in the favor of The Polo/Lauren Company L.P. (“Ralph Lauren”), finding that although the apparel brand’s trademark rights were exhausted, the parallel importer’s use and presentation of the famous logo “POLO RALPH LAUREN” still constituted unfair free-riding and therefore violated Taiwan’s Fair Trade Act. 

Ralph Lauren sued Jie Sin Trading Co. Ltd. (“Jie Sin”), an importer of foreign brands, for trademark infringement and unfair competition in 2022. According to Ralph Lauren, Jie Sin, without proper license or permission, used Ralph Lauren’s famous trademarks “POLO RALPH LAUREN” (no. 00069730, no. 01686231, and no. 01737294, see below) without authorization in the sale of polo shirts in Jie Sin’s physical store located in S-Outlet, a shopping mall operated by co- defendant ESSE Commerce Development Inc. Ralph Lauren argued that such use would likely cause confusion, and was both deceptive and unfair.

Jie Sin contended that it is a parallel importer lawfully reselling genuine apparel products. All of the clothing sold at its S-Outlet store, according to Jie Sin, was sourced from Ralph Lauren in other countries. Besides, Jie Sin had placed its brand “JS’Maxx” on the store’s signage and banners showing “POLO RALPH LAUREN”, which should be sufficient to help the consumers identify the true source and avoid confusion.

The IPC Court rejected Ralph Lauren’s trademark infringement claim, but found that Jie Sin’s conduct amounted to unfair free-riding:

1.        On the trademark claim, the IPC Court elaborated that per Article 36 of Trademark Act, a trademark owner could not assert trademark right over products that have been lawfully placed in the market by itself or with its consent. Moreover, Taiwan adopts the doctrine of international exhaustion. Unless exceptional circumstances apply, a parallel importer’s resale of genuine products is generally exempt from trademark liability. 

2.        Here, the products sold in Jie Sin’s store were genuine Ralph Lauren apparel purchased abroad and imported into Taiwan. Although Jie Sin’s use of “POLO RALPH LAUREN” constituted trademark use, Ralph Lauren’s trademark rights on these products were deemed exhausted per Article 36 of Trademark Act.

3.        Having said the above, the IPC Court held that Jie Sin’s use of Ralph Lauren’s famous trademarks violated Article 25 of Fair Trade Act. More specifically, according to the guidelines issued by Fair Trade Commission, a parallel importer, even when selling genuine products, must not act in any way that may mislead ordinary consumers to believe that it is the authorized agent or distributor of the brand.

4.        Based on the submitted evidence, although Jie Sin included its logo “JS’Maxx” on the store’s signage, the mark was not as prominent or visible as the eye-catching “POLO RALPH LAUREN” brand. Further, the design of counter, shop window, and product display resembled those of a Ralph Lauren store. Under such circumstance, Jie Sin’s use of the famous “POLO RALPH LAUREN” trademark would mislead ordinary consumers to believe that Jie Sin’s sale of products are licensed by Ralph Lauren, which constitutes a free-ride on Ralph Lauren’s goodwill and reputation. 

(Source: https://2hyperlife.com/shinysun2022/)

Accordingly, the IPC Court ruled that Jie Sin shall cease using Ralph Lauren’s well-known trademarks and pay Ralph Lauren damages proportionate to the profits it earned through its unfair competition. 

 

Source: 111 Ming-Shan-Su-Zi No. 57 https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c57%2c20250430%2c1

Source: S-Outlet: https://www.s-outlet.com.tw/dm.php?i=181