Taiwan Court Affirmed Burberry’s Victory in Trademark Infringement Action On Appeal

In its decision rendered on March 20, 2025, Taiwan’s Intellectual Property and Commercial Court (the “IPC Court”) sided with Burberry Limited, affirming that LAICARFORE FASHION CLOTHING LIMITED COMPANY (“Laicarfore”) and ANIDA INTERNATIONAL CO., LTD. (“Anida”) should be liable for infringing the fashion brand’s well-known stripes icon (no.00906192 and no. 00905930, see below).

The defendants, Laicarfore and Anida, are vendors of dresses, shirts, skirts, coats, pants, and the relevant accessories. According to the records, Laicarfore and Anida contracted with factories in China for the supply of apparel products, and then imported and resold them through their own online platform (https://www.laicarfore.com.tw/) under the brand “Anita Su x LaiCarFore”. In around October 2021, Burberry discovered that the defendants were selling clothing bearing similar stripes icon on its website (See below). 

Given that Laicarfore had been sued by and settled with Burberry for trademark infringement for a couple of times, and that Laicarfore once again breached its written promise not to infringe Burberry’s trademark, Burberry decided to sue both Laicarfore and Anida for damages in the IPC Court. On July 31, 2024, in the first instance level, the IPC Court ruled in Burberry’s favor, finding Laicarfore and Anida jointly liable for trademark infringement, and awarding Burberry NT$ 3.98 million as damages, including NT$ 3 million as liquidated damages. Both Laicarfore and Anida appealed.

On appeal, Laicarfore and Anida argued that the stripes displayed on their products should not constitute trademark use, and that consumers will not be confused. On March 20, 2025, the IPC Court affirmed the finding of infringement of trademark, but reduced the liquidated damages to NT$ 2 million, finding the original awarded damages too excessive. The total awarded compensation became around NT$2,98 million. The IPC Court’s reasons are as follows:

1.    By examining the stripes and patterns displayed on the accused products, it is clear to the IPC Court that the background color similarly is beige, and the arrangements of thick and thin stripes resemble Burberry’s way of arrangement of red, black, and white stripes. The overall visual impression of the icon presented on the accused products is similar to Burberry’s aforesaid famous stripes logo.

2.    While there are other decorative elements presented on the accused products, these elements are randomly placed and not located in the most dominant position. In other words, consumers would still consider the colorful stripes the most dominant elements in the accused products.

3.    Although Laicarfore and Anida contended that the way they presented the color stripes should not constitute trademark use, the IPC Court disagreed, noting that the colorful stripes were clearly shown on Laicarfore’s and Anida’s website, and visible to general consumers when they shopped and purchased the products. As such, there should be intents on the part of Laicarfore and Anida to attract consumers by using similar icons on the accused products, which should constitute act of trademark use.

4.    On issue of damages, after considering that the defendants have made partial payments to compensate Burberry, that the defendants’ illegal profits have been forfeited, and the actual damages incurred upon Burberry, the IPC Court opined that the original award of NT$ 3 million as liquidated damages was too excessive. As such, the IPC Court exercised its discretionary power under Article 252 of Civil Code and reduced the liquidated damages to NT$ 2 million only.

Source:

113-Ming-Shan-Shan-Zi No. 16 (IPC Court, March 20, 2025), see: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,113%2c%e6%b0%91%e5%95%86%e4%b8%8a%2c16%2c20250320%2c1

 

Article 252 of Civil Code: “If the agreed penalty is disproportionately high, the court may reduce it to a reasonable amount.”

Taiwan’s IP Office rejected VOLKSWAGEN’s opposition against trademark “VSW”

 On February 19, 2025, Taiwan’s IP Office (“TIPO”) dismissed an opposition by German auto giant VOLKSWAGEN, finding its “VW” trademarks (no. 00888319 and no. 02132639, see below) would not be confused with the contested trademark “VSW”.

 

The contested trademark, “VSW” (no. 02366144, see below), was filed by VISION (SHANGHAI) BRAND MANAGEMENT CO., LTD. (“VISION”) on September 18, 2023, and granted on April 1, 2024, designated for use in goods in class 25, including shoes, hats, socks, sweater, clothes, vests, shirts, pants, etc. VOLKSWAGEN filed opposition on June 27, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO ruled on February 19, 2025, finding VISION’s “VSW” not similar with VOLKSWAGEN’s “VW” trademarks:

1.    TIPO noted that while both VISIONS’s “VSW” and VOLKSWAGEN’s “VW” feature the letters “V” and “W”, the overall layout and visual design of the letters are noticeably different. In VISIONS’s “VSW”, an extra “S” is placed in the center that links the above “V” and the below “W”, which makes the entire visual impression dissimilar to VOLKSWAGEN’s “VW”. Ordinary consumers with reasonable care shall be able to distinguish VISIONS’s “VSW” from VOLKSWAGEN’s “VW”.

2.    On the designated products, TIPO was aware that VOLKSWAGEN’s “VW” were applied for use in apparel and related clothing, such as coats, scarfs, ties, suits, etc. These products’ functions and purposes overlap with those of products designated by VISIONS’s “VSW”. As such, TIPO agreed that the VISIONS’s “VSW” and VOLKSWAGEN’s “VW” were applied for use in similar goods.

3.    TIPO also found that evidence submitted by VOLKSWAGEN has sufficiently shown that its “VW” trademarks are distinctive, and have achieved well-known status in Taiwan. However, the similarity between VISIONS’s “VSW” and “VOLKSWAGEN’s “VW” is low, and the scope of “VW” trademarks’ fame seems to concentrate in the auto industry. Outside the categories of auto products and its relevant services, such as services for restaurants, lease of real property, beauty and cosmetics, and medicines, TIPO noted that there have been other co-existent trademarks that similarly feature “V” and “W”. Therefore, there should be no risk of confusion or dilution for VISION to register “VSW” in the category of apparel.

4.    Further, there is no other evidence showing VISION’s registration of “VSW” was based on bad faith to imitate “VOLKSWAGEN’s “VW”. The degree of similarity is low, and VISION’s “VSW” was applied for use in clothing and apparel. TIPO considered the records insufficient to prove that VISION’s registration was based on intent to take a free ride on VOLKSWAGEN’s “VW”.

5.    In view of the above, given that the similarity between VISIONS’s “VSW” and VOLKSWAGEN’s “VW” is low, that both trademarks possess considerable distinctiveness, and that there is no evidence showing risk of dilution and VISION’s bad faith to imitate, TIPO concluded that registration of “VSW” does not violate Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dEJHaHZOSnFBTFhweE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true     

 

1.    Article 30.1.10 of Trademark Act

A trademark shall not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper”.

2.    Article 30.1.11 of Trademark Act

A trademark 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, unless the proprietor of the said well-known trademark or mark consents to the application”.

3.    Article 30.1.12 of Trademark Act

     A trademark shall not be registered if such a mark is “identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application”.

HUGO BOSS Prevails in Taiwan Trademark Cancellation Case

On February 27, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of HUGO BOSS AG (“HUGO BOSS”), canceling the contested trademark “USHIO BOSS & device” after finding such trademark may cause confusion with the well-known brand “BOSS” and “HUGO BOSS” (See below).

The contested trademark, “USHIO BOSS & device” (no. 02343796, see below, hereafter “USHIO BOSS”), was filed by YU CHEN METAL DIE-CAST CO., LTD. (“YU CHEN”) on September 23, 2022, and granted on December 16, 2023, designated for use in goods in class 25, including belts, shoulder straps, belts for clothing, suspenders, etc. HUGO BOSS filed opposition on March 14, 2024, citing violations of Articles 30.1.10, and 30.1.11 of Trademark Act.

Before filing application for the contested trademark, YU CHEN has already filed and successfully registered a number of trademarks that feature combinations of “USHIOBOSS” and the shark icon (e.g., no. 01599368, no. 01059828, and no. 01583826, see below). YU CHEN therefore argued that these trademarks have co-existed with HUGO BOSS’s trademarks for years without actual confusion, and that since the contested trademark belongs to the same series, there should be confusion.  

TIPO did not side with YU CHEN. In its determination on February 27, 2025, TIPO found the registration of the contested trademark shall be canceled:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

2.      On similarity, TIPO noted that in HUGO BOSS’s cited trademarks, the dominant portion is obviously “BOSS” and “HUGO BOSS”. As to YU CHEN’s contested trademark, “USHIO” and “BOSS” are the portions that would raise consumer’s attention. To this end, TIPO found that YU CHEN’s contested trademark, similarly, features the letter “BOSS”, and that the “USHIO” in Yu CHEN’s contested trademark also bears some degree of similarity with “HUGO”, since both include letters of “H”, “U”, and “O”. As such, there is visual, conceptual, and verbal similarity between YU CHEN’s and HUGO BOSS’s trademarks.

3.      On the designated goods, the contested trademark was applied for use in various kinds of belts and suspenders, which are similar or related to the products designated by HUGO BOSS’s trademarks, which cover clothing, shirts, belts, shawl, sash, etc.

4.      Moreover, based on the records submitted by HUGO BOSS, both its “BOSS” and “HUGO BOSS” trademarks have been recognized as well-known by TIPO, and have established strong brand recognition among the relevant consumers. Taiwan’s consumers would be more familiar with HUGO BOSS’s trademarks than with the contested trademark.

5.      Although YU CHEN argued that its previous trademarks have co-existed with HUGO BOSS’s trademarks for many years, TIPO nonetheless found those trademarks cited by YU CHEN actually feature one single word “USHIOBOSS”, not “USHIO” and “BOSS”, which were somehow dissimilar to the contested trademark. Besides, these trademarks have long expired and were no longer in use. As such, the mere facts that YU CHEN once registered “USHIOBOSS” were insufficient to prove the contested trademark could co-exist with HUGO BOSS’s trademarks without causing confusion.

6.      In view of the above, given the similarity between “USHIO BOSS” and “HUGO BOSS”, the relatedness of designated products, and the fact that “HUGO BOSS” and “BOSS” are well-known trademarks with which consumers are more familiar, TIPO ruled that the registration of the contested trademark may cause confusion with HUGO BOSS’s cited trademarks. Hence, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a0tVKzJ6dmVXWkM2a1plMlBIcGdTUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Fashion brand PRADA successful in trademark opposition against trademark “PRHA”

On February 27, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of PRADA S.A., finding the fashion brand’s iconic logos “PRADA” and “PRADA MILANO” (no .00596574 and no. 02274404, see blow, hereafter together as “PRADA”) may be confused due to registration of trademark “PRHA”.

The contested trademark, “PRHA” (no. 02354409, see below), was filed on April 10, 2023, and registered on February 1, 2024, designated for use in goods in class 18, including purses, bags, backpacks, suitcases, briefcases, wallets, handbags, etc. PRADA S.A. filed opposition on April 30, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with PRADA S.A. 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 identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

2.      On similarity, TIPO found PRADA S.A.’s cited trademarks would form a strong impression of “PRADA”, which share the same initial letters “PR” and the last letter “A” with the contested “PRHA”. The letter “H” in the middle of the contested trademark is minor difference, and thus insufficient to distinguish the contested trademark from “PRADA”.

3.      On the designated goods, TIPO noted that the cited trademarks “PRADA” and “PRADA MILANO” were also applied for use in various kinds of bag products like handbags, briefcases, backpacks, suitcases, etc. TIPO opined that the products designated by trademark “PRHA” resemble those designated by PRADA S.A.’s trademarks.  

4.      Furthermore, TIPO noted that based on the records, PRADA S.A.’s cited trademarks have been used in Taiwan for very long time. For example, the cited trademarks were registered in Taiwan back in 1993. Since then, the brand has been continuously promoted on a variety of fashion magazines like ELLE, GQ, and VOGUE TAIWAN. Over the years, the brand has also established numerous physical stores in prestigious department stores, including Breez Plaza, Shin Kong Mitsukoshi, Hanshin, and MEGA City. In view of these records, TIPO concluded that PRADA S.A.’s trademarks have established strong recognizability, and local consumers would be more familiar with PRADA S.A.’s trademarks.

5.      Based on the above, given the similarity between “PRADA” and “PRHA”, the overlap of designated products, the facts that “PRADA” and “PRADA MILANO” are highly distinctive, and that local consumers are more familiar with PRADA S.A.’s cited trademarks, TIPO determined that the registration of “PRHA” may cause confusion with PRADA S.A.’s iconic brand. Hence, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WVplVk8ycDVpVjczS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

TART OPTICAL ENTERPRISES LLC secured its win against “Julius Tart” trademark before the Petitions and Appeals Committee

On March 3, 2025, the Petitions and Appeals Committee (“Committee”) of the Ministry of Economic Affairs affirmed the determination made by Taiwan’s IP Office (“TIPO”), which found that the contested trademark “Julius Tart” shall be invalidated due to likelihood of confusion with “TART” trademark (no. 01481575, see below), a popular glasses brand registered and owned by TART OPTICAL ENTERPRISES LLC (“Tart Optical”) since 2011 in Taiwan.  

The contested trademark, “Julius Tart” (no. 02157696, see below), was filed by a Japanese company, THE LIGHT CO., LTD. (“The Light”), on February 25, 2021, and granted on August 1, 2021, designated for use in products in Class 9, including eyeglass frames, eyeglass components, eyeglass stands, lens, sunglasses, eyeglass cases, etc. On September 7, 2022, Tart Optical filed invalidation action against “Julius Tart”, citing, among the others, violations of Article 30.1.10 and 30.1.11 of Trademark Act.

On August 30, 2024, TIPO sided with Tart Optical based on Article 30.1.10 of Trademark Act, finding “Julius Tart” confusingly similar to the cited “TART” trademark. The Light appealed, contending that “Julius Tart” should be dissimilar from Tart Optical’s “TART” because of its different style and font size, that “Julius Tart” has been in use for some time and should be able to co-exist without causing confusion, and that its registration of “Julius Tart” was supported and authorized by Mr. Richard Tart, the legitimate successor of the family of Mr. Julius Tart, who founded Tart Optical in 1948.

The Committee did not find The Light’s arguments persuasive. In its determination denying The Light’s appeal, the Committee reasoned that:

1.      On similarity, TIPO was correct to find “Julius Tart” similar to “TART”. “Tart” was the dominant portion of “Julius Tart” that may form visual, verbal, and conceptual similarity with Tart Optical’s “TART”. The presence of “Julius” and variations of font size, letter case, and style were minor differences that are insufficient to make The Light’s “Julius Tart” distinguishable from “TART”.

2.      On the designated products, both trademarks cover products related to eyeglasses and its components that serve similar function and purpose to correct eye’s vision. As such, The Light’s “Julius Tart” was designated for use in goods that are similar to those covered by Tart Optical’s “TART”.

3.      The Light submitted evidence of trademark use and specifically argued that consumers in Taiwan shall be more familiar with “Julius Tart”. The Committee disagreed, finding The Light’s supporting evidence, at best, was only able to show it has used “Julius Tart” for its products sold in Taiwan prior to the filing date of its contested trademark. The Committee pointed out that without records showing the market share, revenue, and marketing expenses, The Light’s evidence such as webpages, social media posts, worldwide trademark registrations, news reports, and YouTube videos, was insufficient to prove local Taiwanese’s familiarity with “Julius Tart”.

4.      While The Light argued that its registration of “Julius Tart” was authorized and based on good faith, the Committee found this factor secondary, and, even assuming to be true, was insufficient to neutralize the strong inference of likelihood of confusion caused by the similarity between the two trademarks and the overlap of the designated products.

In view of the above, the Committee determined that TIPO was not erroneous in finding likelihood of confusion between “Julius Tart” and “TART”, and affirmed TIPO’s finding accordingly.

 

Source:

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bkpQOVNQK1ZMeG1Zd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

The Committee’s decision:    

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=H01110084&docDate=114/03/04&type=1&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German liqueur brand Mast-Jägermeister won the battle of the deers

On January 21, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of Mast-Jägermeister SE (“Mast-Jägermeister”), canceling a contested trademark after finding it confusingly similar with the German liqueur brand’s iconic logos (no. 01813871, 01813870, and 01808400, see below).

The contested trademark, “RED DEER STATION” (no. 02304993, see below), was filed by Australia’s winemaker Inspire Vintage Pty Ltd. (“Inspire”) on November 7, 2022, and granted on July 1, 2023, designated for use in various kinds of alcoholic products, such as red wine, fruit wine, sparkling wine, cherry wine, mint liqueur, etc. Mast-Jägermeister filed opposition against Inspire on September 28, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On January 21, 2025, TIPO sided with Mast-Jägermeister based on Article 30.1.10 of Trademark Act:

1.    On similarity, TIPO found Inspire’s deer logo resembles Mast-Jägermeister’s trademarks, because both mainly feature the head of a stag with forked and long antlers. The visual impression and concept of the two trademarks are similar with each other.  

2.    With regard to the designated products, TIPO noted that Inspire’s “Red Deer” similarly is used in alcoholic beverages, such as brewed wine, fruit wine, liqueur, etc. As such, TIPO agreed with Mast-Jägermeister that both trademarks cover similar product categories.

3.    With regard to the strength and fame of the trademark, TIPO found Mast-Jägermeister’s brands have been used in liqueur products in Taiwan since as early as 2015, especially the renowned “Jägermeister liqueur”, which is a very popular herbal liqueur for its unique blend of 56 herbal, fruits, roots, and spices. In other words, the relevant consumers in Taiwan are more familiar with Mast-Jagermeister’s trademarks.

In view of the above, given the similarity between Inspire’s and Mast-Jägermeister’s trademarks, the overlap of the designated products, and the facts that Mast-Jägermeister’s trademarks have been in use since 2015 and have established considerable recognition among the relevant consumers, TIPO concludes that Inspire’s contested trademark shall be canceled due to likelihood of confusion with Mast-Jägermeister’s trademarks.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ckxTVC83SUc2aUdmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

MLB successful in canceling trademark “M1” over likelihood of confusion with the well-known icon of NY Yankees

On January 24, 2025, MAJOR LEAGUE BASEBALL PROPERTIES, INC. (“MLB”) successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel trademark “M1”, for the contested trademark is confusingly similar with the famous icon of New York Yankees (no. 00426890, 00974460, 00153759, 00976954, 00990958, 02149872, and 02150656, see below, hereafter “Yankees trademarks”).

The contested trademark, “M1” (no. 02284002, see below), was filed on June 17, 2022, and granted on March 1, 2023, designated for use in services in class 35, including retail and wholesale for mobile phone accessories, clothes, shoes, electronic appliances, etc. MLB filed opposition against “M1” on June 1, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On January 24, 2025, TIPO ruled in favor of MLB based on Article 30.1.11 of Trademark Act:

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 registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.”

2.      Firstly, TIPO affirmed the Yankees trademarks are well-known given the evidence showing MLB’s registration of series trademarks in Taiwan dated as early as 1988, the worldwide popularity of New York Yankees, the media coverage of Taiwanese pitcher Chien-Ming Wang, who played for New York Yankees and was the first Taiwanese pitcher who appeared in the MLB playoff, and the marketing and sales records of the relevant merch and baseball games.  

3.      On similarity, TIPO noted that the contested trademark features overlapping “M” and “1”, which bears strong visual similarity with the overlapping “N” and “Y” presented in the Yankees trademarks. The style, contour, and structure of “M1” all resemble those demonstrated in the Yankees trademarks.

4.      Further, TIPO found the Yankees trademarks are highly distinctive, and have been used in a variety of merch, including caps, T-shirts, shoes, socks, sports handbags, backpack, umbrellas, purses, toys, etc. Besides, these products are related to the retail and wholesale services designated by the “M1” trademark, which may cause consumers to draw connection between products represented by the Yankees trademarks and services designated by “M1”.

5.      In sum, given that the Yankees trademarks have been well-known by the filing date of the “M1” trademark, that “M1” is highly similar to the Yankees trademarks, that the Yankees trademarks are distinctive, and have established profound recognizability among the relevant consumers in Taiwan, TIPO concluded that the registration of “M1” may cause confusion with the famous Yankees trademarks. Hence, registration of “M1” was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Q00rZFJBdC9oeVJodlZOK3hUMlhhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true