LV Successful In Cancelling Similar “VUIT TON” Trademark in Taiwan’s IP Office

LOUIS VUITTON MALLETIER (“LVM”), the registered owner of “LOUIS VUITTON” and “VUITTON” trademarks in Taiwan, filed opposition against Rise Edge Limited Taiwan (“Rise Edge”), alleging Rise Edge’s trademark (Reg. No. 01940391, see below) would cause dilution to the distinctiveness of its famous trademarks. On March 31, 2020, Taiwan’s Intellectual Property Office (“IPO”) sided with LVM.

Based on the records of IPO, Rise Edge filed the contested trademark on January 8, 2018, and designated such trademark for service in class 43, including cuisine service such as Japanese food restaurant, Japanese noodles, drink, shabu-shabu (Japanese-style hot pot), ramen, Japanese bar, etc. Rise Edge’s application was granted on September 16, 2018. LVM filed opposition with IPO on December 17, 2018, citing violation of Article 30.1.11 of Trademark Act, which prescribes that a trademark shall not be registered if such 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.”

The IPO found Rise Edge’s contested trademark may dilute the distinctiveness of LVM’s “LOUIS VUITTON” and “VUITTON” trademarks.

1. LVM claimed, and the IPO agreed, that LVM’s registered “LOUIS VUITTON” and “VUITTON” trademarks“ are well-known trademarks (see below). The trademark “LOUIS VUITTON” is based on the name of its founder, and has been put in use by LVM since as early as 1896. Based on the records of trademark use and other supporting judicial and administrative determinations at hand, IPO found both “LOUIS VUITTON” and “VUITTON” are highly distinctive and famous in fashion goods such as apparel, clothes, bag, watches, accessories, hats, and boots after LVM’s continuous use and successful marketing throughout the world.                                          
2. With regard to similarity, the IPO determines that Rise Edge’s trademark is highly similar with LVM’s aforesaid famous trademarks, for the characters “VUITTON” are also presented and clearly discernible in Rise Edge’s contested trademark. Although Rise Edge tried to distinguish its trademark by disconnecting “VUIT” from “TON”, and replacing the “O” in “TON” with a piggy nose, IPO considers such difference is insufficient to make Rise Edge’s trademark distinguishable from LVM’s famous trademarks.
3.  Besides, the IPO notes that no matter it is “VUITTON” or “LOUIS VUITTON”, one can hardly find any other similar trademark used by third party in other different goods or services. In other words, LVM’s aforesaid trademarks are not only famous, but also unique. Thus, LVM’s famous trademarks shall be entitled to higher degree of exclusivity.
4. The more well-known a trademark becomes, the more likely that its distinctiveness will be diluted by other similar trademark, even when the designated goods or service is different, because the well-known trademark is so popular and widely recognized by the relevant consumers. If Rise Edge’s contested trademark is not cancelled, its continuous use may gradually erode and weaken the distinctiveness and uniqueness of LVM’s cited famous trademarks.

Based on the above reasons, the IPO concluded that Rise Edge’s contested trademark shall be cancelled in accordance with Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cnJuYVJUNkxPckFEVDh2YmlZR3N5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true