“LV” prevails in trademark opposition against “LY”

In its determination rendered on September 28, 2023, Taiwan’s IP Office (“TIPO”) sided with fashion giant LOUIS VUITTON MALLETIER (“LOUIS VUITTON”), finding registration of trademark “LY” should be canceled due to its similarity with LOUIS VUITTON’s famous trademark “LV”.

 

According to Article 30.1.11 of Trademark Act, a mark shall not be registered if such a 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.

 

Based on the evidence submitted by LOUIS VUITTON, including the marketing materials, media exposures, news reports, and prior court decisions, TIPO affirmed that LOUIS VUITTON’s trademark “LV” (No. 01922370, see below) has obtained the status of well-known trademark in the field of perfume, watches, bags, accessories, jewelry, etc.

 

On similarity, TIPO noted that the contested trademark “LY” (no. 02222609, see below) demonstrates similar pattern as LOUIS VUITTON’s trademark “LV”. Both feature one English letter at the top and another English letter at the bottom, with overlapping portion in the middle. Additionally, both trademarks have the same letter “L”, and the “Y” in “LY” is somehow visually similar with the “V” in “LV”. TIPO hence considered both trademarks visually similar with each other.

 

Further, TIPO noted that “LY” is designated for use in services like online shopping, department store, TV shopping, retail and wholesale services for cosmetics, etc. These services are related to the products in which LOUIS VUITTON’s “LV” is used.

 

Given that LOUIS VUITTON’s “LV” has become well-known and is highly distinctive, that the contested trademark “LY” is similar with “LV”, and that “LY” is applied for use in services that are related to the products in which “LV” is used, TIPO concludes that registration of “LY” may raise confusion among consumers with LOUIS VUITTON’s famous trademark “LV”. As such, the contested trademark “LY” is canceled accordingly.    

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Qi9sa0tDbTc5Q2RTekNCSG5BcTdKZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true