LOUIS VUITTON prevailed over “LOVISM & LVS” in trademark opposition

On September 16, 2021, LOUIS VUITTON MALLETIER (“LOUIS VUITTON”) filed opposition against HERMOSE BIOTECH CO., LTD. (“HERMOSE”), contending that trademark registered by HERMOSE would cause confusion with LOUIS VUITTON’s famous LV logo (Reg. No. 01922370 and 01587780, see below).

 

The contested trademark, “LOVISM & LVS” (Reg. No. 02149554, see below), was filed for registration on August 18, 2020, and granted on June 16, 2021. The contested trademark was applied for use in goods under class 3 and class 21, including skin care products, cosmetics, lotion, lipstick, sunscreen lotion, facial cleanser, fragrances, wrinkle creams (class 3); and cosmetic sets, and perfume sprayers (class 21).

 

LOUIS VUITTON alleged that the registration of “LOVISM & LVS” would cause confusion with its famous LV logos, thereby violating Article 30.1.10 of Trademark Act. On October 20, 2022, Taiwan’s IP Office (“TIPO”) agreed with LOUIS VUITTON, finding that:

 

1.      Article 30.1.10 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 registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

2.      As both “LV” and “LOVISM & LVS” demonstrate similar combination of letters “L” and “V”, and “LVS” constitutes the major part of the contested “LOVISM & LVS” trademark, TIPO opines that HERMOSE’s contested trademark is visually and verbally similar with LOUIS VUITTON’s “LV” logo.

3.      As to the designated goods, TIPO notes that both HERMOSE’s contested trademark and LOUIS VUITTON’s “LV” are designated for use in cosmetics and fragrance products, which serve similar function and are normally considered to be related to each other. Therefore, the contested trademark is applied for use in similar goods.

4.      Further, LOUIS VUITTON has submitted sufficient records, such as advertising materials, media exposures, TIPO’s prior determinations, etc., showing that its “LV” logo is not only considered as well-known by TIPO, but has also been used and marketed profoundly in Taiwan. Therefore, TIPO posits that LOUIS VUITTON’s “LV” is highly distinctive, and that consumers are more familiar with LOUIS VUITTON’s “LV” logo.

 

In view of the similarity between “LV” and “LOVISM & LVS”, the fact that the contested trademark is applied for use in similar goods, and that “LV” is highly distinctive and consumers are more familiar with LOUIS VUITTON’s “LV” logo, TIPO determines that the contested trademark is confusingly similar with LOUIS VUITTON’s “LV” logo.

 

As a result, the contested trademark is canceled by TIPO accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WnBuMnBzdmZ0MGlHSnQ5R2lWM0ladz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Hermès Scored A Win For Its Famous Bag Charm Horse Logo Before Taiwan’s IP Office

On September 30, 2022, Taiwan’s IP Office (“TIPO”) sided with Hermès International, finding registration of trademark no. 02140931 was based on intent to imitate the fashion giant’s famous bag charm horse logo (see below).

The challenged trademark, i.e., no. 02140931 (see below), was filed on July 24, 2020, and granted on May 16, 2021, designated for use in goods in class 18, including leather boxes, artificial leather, leather belts, tanned leather, holsters for springs, belts for roller skates, leather trims for furniture, leather furniture covers, leather tags, luggage tags, wallets, purses, backpacks, luggage, and suitcases. Hermès filed opposition on May 17, 2021, contending that the registration of no. 02140931 violates Article 30.1.12 of Trademark Act.

 

According to Article 30.1.12 of Trademark Act, a mark shall not be registered if such a mark is:

1) identical with or similar to another person’s earlier used trademark

2) to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, and

3) where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.

On September 30, 2022, TIPO sided with Hermès in its determination to cancel the registration of the contested trademark:

1.    Firstly, Hermès as a brand is well-known in products like leather bag and other fashion accessories. Based on evidence of trademark use, since at least in 2013, Hermès had introduced a bag charm featuring its iconic horse. Such unique leather accessory has gathered tremendous success and remained popular since then. For example, there has been continuous news coverage from the mainstream media, and Hermès’ subsequent development of bag charm series remained trendy topic of discussion on various social media networks. Before the filing date of the contested trademark, Hermès’ aforesaid horse bag charm has been used and become famous among the relevant consumers.

2.   Although the registrant of the contested trademark contended that Hermès’ bag charm is not a trademark, but a product only, TIPO disagreed. To the contrary, TIPO finds that the unique design of the shape and style of the horse icon is distinctive and eligible for trademark protection. Plus, considering that such icon has been granted trademark registrations in other jurisdictions like EU and Korea, TIPO is of the view that consumers will consider such bag charm distinctive and as a trademark.

3.    Turning to similarity, TIPO finds the contested trademark and Hermès’ bag charm icon similar in terms of their overall concept and visual appearance. While there are minor differences in the way the tails, eyes, and horse hooves are presented, such differences are not sufficient to make the contested trademark distinguishable from Hermès’ well-known icon.

4.    As to the designated use of goods, the contested trademark is applied for use in various kinds of leather products, which are highly similar with the products for which Hermès’ bag charm icon is applied.

5.    While there is no direct evidence showing the registrant filed trademark application based on intent to imitate Hermès’ well-known bag charm logo, TIPO notes that the registrant is also engaged in similar leather business, which suggested that the registrant is more capable of learning the news and trend in the market. In this light, the fact that the registrant specifically chose to register a trademark that is highly similar with Hermès’ famous icon for use in highly similar goods evinces that the registrant should know the existence of Hermès’ popular bag charm when filing application for the contested trademark. As a result, TIPO rules that application of the contested trademark was filed based on intent to imitate Hermès’ well-known icon.

In view of the above, TIPO concludes that the application of the contested trademark was filed with intent to imitate the already well-known horse shape bag charm that Hermès has been put in trademark use since at least in 2013. The contested trademark is thus cancelled based on Article 30.1.12 of Trademark Act accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dVlIODJFRDg5dXV6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true