Michael Kors scored a win for its “MK” trademark

 On April 29, 2022, Taiwan’s IP Office (“TIPO”) found in favor of MICHAEL KORS (SWITZERLAND) INTERNATIONAL GMBH (“Michael Kors”), determining that trademark no. 02140941 should be canceled in view of likelihood of confusion with Michael Kors’ trademark (Reg. No. 01770999, see below).

 

The challenged trademark (see below) was filed on September 21, 2020, and granted on May 16, 2021, designated for use in goods under class 18, including various kinds of bags, purses, wallets, handbags, tote bags, backpacks, school bags, briefcases, luggage, vanity cases, shopping bags, pet bags, pet backpacks, and umbrella. Michael Kors filed cancellation on August 13, 2021, contending among the others, that registration of the challenged trademark would cause confusion with Michael Kors’ “MK” logo.

TIPO sides with Michael Kors, finding that:

1.    The challenged trademark is composed of the letter “N” and “<”, and there is only little space in between. When seeing the challenged trademark, consumers would easily perceive it as “NK”, instead of “N<”. From this perspective, TIPO considers the challenged trademark is similar with Michael Kors’ cited “MK” trademark. However, in entirety, since there is additional characters “Michael Kors” presented in Michael Kors’ cited trademark, TIPO is of the view that the degree of similarity between the challenged trademark and the Michael Kors’ trademark is not high.

2.    As to the similarity of goods, TIPO notes that Michael Kors’ cited trademark is also designated for use in goods under Class 18, which includes handbag, purses, luggage, suitcase, briefcase, etc. Hence, TIPO determines that the challenged trademark is applied for use in products that are highly similar with Michael Kors’ trademark.

3.    TIPO agrees that Michael Kors’ “MK” logo is highly distinctive, and has become a very popular brand in Taiwan. Currently, Michael Kors has 15 stores, and has been very active in promoting and marketing its products. As such, TIPO finds consumers are more familiar with Michael Kors’ “MK”.

4.    In view of the above, although the similarity between Michael Kors’ “MK” trademark and the challenged trademark is not high, considering: 1) the high similarity of the products designated for use by the challenged and cited trademark, 2) the fact that Michael Kors’ cited trademark is more famous; and 3) that consumers are more familiar with Michael Kors’ “MK” logo, TIPO rules that registration of the challenged trademark may cause confusion among the relevant consumers. As a result, the registration of the challenged trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZC9zTkZvVjlrSXJnM1k3cXRXSG5qQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true