2025年7月19日 星期六

Taiwan’s IP Office found “CHANTE’” confusingly similar to “CHANEL”

On June 25, 2025, Taiwan’s IP Office (“TIPO”) canceled the contested trademark “CHANTE’” in an opposition filed by Chanel, finding that the contested trademark is confusingly similar to Chanel’s well-known icon “CHANEL” (no. 01848463 and no. 01849570, see below).

The contested trademark, “CHANTE’” (no. 02369583, see below), was filed by Fei-Chang-Yi-Zhuo Limited (“FCYZ”) on June 21, 2023, and granted on April 16, 2024, designated for use in goods in Class 25, including suit, dress, pants, skirts, women’s clothing, underwear, swimwear, etc. Chanel filed opposition on July 11, 2024, alleging violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Chanel’s favor on June 25, 2025 based on Article 30.1.10:

1.        Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is identical or similar to another’s registered trademark, is applied for use in identical or similar goods or services, and hence creates likelihood of confusion among the relevant consumers.


2.        TIPO found “CHANTE’” and “CHANEL” are visually and structurally similar, as both start with “CH” and contain six characters. The difference between the last two letters (“TE” v.s. “EL”) was minor. While FCYZ argued that “CHANTE’” is French, and should be distinguishable in pronunciation and meaning, TIPO disagreed, noting that French is not a commonly understood by consumers in Taiwan, who are unlikely to perceive the term “CHANTE’” as a French word.


3.        On the designated products, TIPO found “CHANEL” was designated for use in clothing and footwear, which are similar or complimentary in nature to the apparel items listed under “CHANTE’”. As such, TIPO considered the designated products of “CHANTE’” overlap with those of “CHANEL.”


4.        On the strength of trademark, TIPO acknowledged the substantial evidence submitted by Chanel to demonstrate its fame, including the media coverage, sales data, and prior official findings recognizing the well-known status of “CHANEL”. To the contrary, the supporting materials provided by FCYZ were either not undated or failed to show the actual use of “CHANTE’”. TIPO therefore concluded that consumers should be more familiar with “CHANEL”.


5.        In view of the above, given that there is similarity between the trademarks, the overlap of the designated products, the well-known status of “CHANEL”, and Chanel’s strong brand recognition, TIPO held the registration of the contested trademark would likely create confusion among the relevant consumers. Hence, the contested trademark was canceled accordingly.

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOmBMwQrft9%2F97D7TgwoLk6HpqH3IPD

2025年7月13日 星期日

Dior prevailed in trademark dispute for its famous “J’ADORE” trademark

On June 11, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (the “Committee”) ruled in the favor of Dior, affirming the determination of Taiwan’s IP Office (“TIPO”) that the contested trademark shall be canceled due to likelihood of confusion with Dior’s famous “J’ADORE” trademark (no. 00832697, see below).



The contested trademark, “J’adore” (no. 01524570, see below), was filed on October 28, 2011, and granted on July 1, 2012, designated for use in goods in Class 9, including eyeglasses, components for eyeglasses, and optically corrective lenses. Dior filed invalidation on January 15, 2024, alleging violation of Article 30.1.11 of Trademark Act.



On December 27, 2024, TIPO sided with Dior. Although Dior’s “J’ADORE” covered fashion products like perfumes and fragrances, which were different from the eyeglasses products designated by the contested trademark, TIPO found eyeglasses are often used as fashionable and decorative accessories. As such, using a mark that is identical to Dior’s famous trademark, even though in different product category, may still create confusion. The registrant appealed, arguing that Dior’s evidence was insufficient to prove that its “J’ADORE” was famous prior to 2011, and that the designated products of the two trademarks were unrelated. 

The Committee rejected the registrant’s appeal based on the following:

1.        Based on the evidence submitted by Dior, aside from international marketing and sales records, there were sufficient local materials backing the well-known status of “J’ADORE”. For example, coverage in Taiwanese newspapers, Dior’s own webpage, presence in popular department stores like SOGO, Taipei 101, Far Eastern, Shin Kong Mitsukoshi, etc., and the records of online news reports from 1999 to 2011, all showed that when the contested trademark was filed in 2011, Dior’s “J’ADORE” had been famous in the field of perfumes and fragrances. TIPO’s finding was well supported by the submitted evidence.

2.        As to the difference in designated product categories, the Committee found that TIPO was correct in finding relatedness between the products covered by the two trademarks. In fact, it is quite common for eyeglasses to be marketed as fashion items, which could pair with other accessories to enhance one’s personal appearance. To this extent, the products covered by the contested trademark are related to Dior’s perfumes and fragrance, which were used to improve personal appeal. 

3.        Further, “J’ADORE” is not a common word. Registrant’s choice of using exactly the same word as trademark in a related product category could not be reasonably explained as a mere coincidence. The Committee therefore considers the filing of the contested trademark was based on bad faith.

In view of the high degree of similarity, the well-known status of “J’ADORE”, the relatedness of the designated products, and the bad faith in filing the contested trademark, the Committee upheld TIPO’s decision to cancel the contested trademark. 

Source: 

The Committee’s decision:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250713_decisionDownload-A411401026_102743_871_8drbTKdXlR/

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNWI%2BOrAcoQofvg68kjaChqTE4zSKn8QOKZ

2025年7月6日 星期日

Schwan-Stablio’s attempt to cancel Swarovski’s swan trademark fell short

On June 11, 2025, the Taiwan’s Petitions and Appeals Committee of Ministry of Economic Affairs (“Committee”) rejected an appeal filed by Schwan-Stablio, affirming that Taiwan’s IP Office (“TIPO”) was correct in finding that Swarovski’s contested trademark would not cause confusion with the German brand’s iconic swan logo (no. 00851896, the ‘896 mark, see below).

Swarovski’s contested trademark, no. 02226817 (see below), was filed on December 1, 2020, and granted on June 1, 2022. It covered wide range of products in Class 3, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28; and services in Class 35, 41, and 43. Schwan-Stablio filed opposition on September 1, 2022, alleging that Swarovski’s registration for Class 16, which included notebooks, catalogues, book marks, greeting cards, diaries, etc., would cause confusion with the cited ‘896 mark. 

TIPO sided with Swarovski on January 17, 2025, finding that while the ‘896 mark has been well-known in the field of stationery products, the consumers would not confuse the contested trademark with the ‘896 mark. There is no violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. Schwan-Stablio appealed. 

Before the Committee, Schwan-Stablio particularly argued that when viewed as a whole, both trademarks formed visual impression of a swan, differing only in minor aspects such as head orientation and wing style. Besides, in other jurisdictions, such as EU, Turkey, and Egypt, there have been findings of similarity. Further, Schwan-Stablio argued bad faith, noting that its swan logo has been famous for years before Swarovski’s contested trademark was filed. Schwan-Stablio urged the Committee to overturn TIPO’s determination.

The Committee did not rule in the favor of Schwan-Stablio, reasoning that:

1.        Image of has been commonly used and registered as trademark in Taiwan. In fact, in Class 16, there were other registered trademarks featuring similar logos. Hence, consumers in Taiwan are familiar with such imagery, and should be able to distinguish different swan designs While both trademarks feature swans, this alone does not necessarily create likelihood of confusion. 

2.        Additionally, upon further review, there indeed are sufficient differences. For example, the contested trademark featured a swan poised to flight, while the ‘896 mark depicted a swan gliding smoothly on water. There are also other differences, such as the design and shape of the wings, the posture and position of the swans, and the contour and style of their heads. TIPO was therefore justified to find low similarity between the contested trademark and the ‘896 mark.

3.        Assessment of trademark confusion in its nature is territorial and local, which may vary depending on the actual use, consumers’ perception, trade practice, and legal standard. As a result, foreign decisions are not binding on TIPO or the Committee. 

4.        Moreover, records showed that Swarovski had long used swan logo for its jewelry products, and the contested trademark was part of its rebranding initiative in 2021. Without more concrete evidence showing free riding or deceptive intent, Schwan-Sablio’s allegation of bad faith was unfounded. 

To conclude, although Schwan-Stablio’s swan icon is well-known, the designated products are related, and both trademarks feature swans, the Committee found no likelihood of confusion, and affirmed that TIPO’s determination was correct based on the low similarity, the lack of evidence showing bad faith, and the distinctiveness of Swarovski’s contested trademark. 

 

Source: 

TIPO’s decision: 

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOiAskTpvusGijcp6OgcwGULUP6yaMj

The Committee’s decision:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250706_decisionDownload-A211402028_175833_293_4CTPL0df5c/

2025年6月29日 星期日

“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

2025年6月21日 星期六

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

2025年6月14日 星期六

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

2025年6月7日 星期六

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

Taiwan’s IP Office found “CHANTE’” confusingly similar to “CHANEL”

On June 25, 2025, Taiwan’s IP Office (“TIPO”) canceled the contested trademark “CHANTE’” in an opposition filed by Chanel, finding that the ...