“NIVEA” Prevails In Opposition Proceeding Against Convatec’s “MEVIA”

On November 15, 2018, BEIERSDORF AG (“BEIERSDORF”), the registrant of “NIVEA” trademark in Taiwan (see below), filed opposition against CONVATEC INC.’s (“CONVATEC”) registered trademark “MEVIA” in Taiwan’s Intellectual Property Office (“IPO”), alleging violation of Article 30.1.11 of Taiwan’s Trademark Act. On March 18, 2020, IPO sided with “NIVEA”.

(Reg. No. 000039212)

The opposed trademark, “MEVIA” (see below), was filed on June 6, 2017, and granted on August 16, 2018, designated for goods under class 10 (mainly covers medical and diagnostic device) and class 5 (mainly covers medical product such as wound dressing, gel, and bandage). BEIERSDORF filed opposition against MEVIA for goods under class 5, claiming similarity between the two trademarks may raise confusion among the relevant consumers.

(Reg. No. 01934233)

The IPO found “MEVIA” should be cancelled based on the following reasons:

1.     First of all, “NIVEA” is a famous trademark. Records shows that BEIERSDORF has been using “NIVEA” for more than 100 years. In as early as 1905, BEIERSDORF had registered “NIVEA” for its sunscreen and body lotion product, and its first NIVEA trademark was registered with Taiwan’s IPO in 1970. Through its continuous use, NIVEA has become a famous trademark for skin care products prior to the filing date of “MEVIA” trademark (June 6, 2017).

2.     Besides, NIVEA and MEVIA are similar. Both trademarks present the combination of characters “E”, “V”, “I”, and “A”, with different initial character and different sequence. Such differences are minor, and a consumer with ordinary degree of care may still find the two trademarks similar.

3.     Further, NIVEA is highly distinctive, because it bears no relation with its designated goods such as body cleansing, beauty or cosmetic products. Comparing with MEVIA, NIVEA is more famous and should be given more favorable light when it comes to protectability.

4.     In addition, there is evidence showing that BEIERSDORF has expanded its business to medical product like medical bandage, ointment, etc., and acquired numerous trademark registrations for similar goods under class 5. Thus, there is likelihood that consumers may mistakenly believe that the two trademarks represent the same product, or there exists license or other business relationship between BEIERSDORF and CONVATEC.

In light of the above, the IPO found for “NIVEA” and ruled that “MEVIA” should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U0ZTNkhJMTdITkx4TWNIODg4Uk1Wdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true