Taiwan’s IP Court denied Stefano Ricci’s attempt to register its “Head of Eagle” trademark

On December 31, 2020, Taiwan’s IP Court (“TIPC”) ruled against the Italian luxury brand for menswear, Stefano Ricci S.P.A. (“Stefano Ricci”), denying its application for its “Head of Eagle” trademark (see below, application no. 108880563).

Stefano Ricci filed its trademark application on November 30, 2018, designated for use in goods under Class 25, including clothing, coat, shoes, tie, and bathrobe; and services under Class 35, including online sale service for clothing and shoes. However, Taiwan’s IP Office (“TIPO”) found Stefano Ricci’s trademark confusingly similar with the cited trademark (Reg. No. 01479554, see below), and denied Stefano Ricci’s application on February 25, 2020. Stefano Ricci, after failing to convince the Appeal Board to overturn TIPO’s determination, went on to file complaint with TIPC and ask for favorable judgment on its application.

Stefano Ricci’s main arguments focused on the difference between its Eagle Head trademark and the cited trademark. Stefano Ricci argued that aside from displaying head of eagle, the cited trademark also presents Chinese characters “大雕” (which also means “big eagle”), and other decorative elements (i.e., the stars), so the relevant consumers will not find the two trademarks similar with each other. In addition, image of eagle is less distinctive because it is animal that is commonly seen in the nature, and consumers will use other elements, such as the Chinese characters, to distinguish the cited trademark from Stefano Ricci’s. Moreover, Stefano Ricci contended that its brand has established great popularity and recognizability around the globe, so the registration of Stefano Ricci’s trademark will not confuse Taiwan’s consumers.

 

TIPC sided with TIPO, finding Stefano Ricci’s trademark violating Article 30.1.10 of Trademark Act:

1.      Per Article 30.1.10 of Trademark Act, a mark shall not be registered if such a mark is similar with a senior trademark that is applied for use in similar goods or services, and there exists likelihood of confusion among the relevant public.

2.      Here, although there are other elements presented in the cited trademark, TIPC found the featured eagle head should still be the main distinctive portion of the cited trademark, which is visually and conceptually similar with Stefano Ricci’s trademark. While Stefano Ricci argued that there is only limited way to describe natural animals like eagles, and that the style of eye socket, feathers, and beak of its eagle head is different from the eagle presented in the cited trademark, TIPC considered these minor differences and found them insufficient for the consumers to distinguish the Stefano Ricci’s eagle head from the cited trademark.

3.      As to similarity of goods or services, since the cited trademark was also applied for use in apparel products, such as child wear, menswear, tie, etc., TIPC determined the designated goods and services of Stefano Ricci’s trademark provide similar or related function as those of the cited trademark. Therefore, TIPC found the two trademarks are applied for use in similar goods or service.

4.      TIPC noted that Stefano Ricci’s trademark has been used in Taiwan, and agreed that if Stefano Ricci can prove its trademark has become well-known, such fact may balance the court’s evaluation on likelihood of confusion. However, TIPC found the volume of evidence of use submitted by Stefano Ricci unable to show its contested trademark has been profoundly used and recognizable to the relevant consumers in Taiwan. Thus, TIPC opined that since the two trademarks are similar with each other and are applied for use in similar goods or services, there is likelihood of confusion caused by the registration of Stefano Ricci’s trademark.

 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c82%2c20201231%2c1