Cosmetics Giant “NIVEA” prevailed in trademark opposition over “NEAUVIA”

On October 31, 2023, BEIERSDORF AG (“BEIERSDORF”), the trademark registrant of “NIVEA” (no. 01790601, 01521516, 01316235, 00384064, and 00039212, see below), successfully challenged and canceled registration of trademark “NEAUVIA”, a mark registered by Swiss company MATEX LAB SWITZERLAND SA (“MATEX”), in trademark opposition proceeding.

The contested trademark, “NEAUVIA” (no .02177831, see below), was filed by MATEX on November 10, 2020, and granted on October 16, 2021, designated for use in services under class 44, including medical treatment, beauty and skin care services, plastic surgery, beauty consultant, etc. BEIERSDORF filed opposition against MATEX’s “NEAUVIA” on January 17, 2022, citing violation of Article 30.1.10, 30.1.11 and 30.1.12 of Trademark Act.

 

Taiwan’s IP Office (“TIPO”) sided with BEIERSDORF, reasoning that:

1.      Article 30.1.11 of Trademark Act provides that 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”.

2.      To begin with, TIPO finds that based on the successful sales of products and continuous use of “NIVEA” trademark throughout the past 50 years in Taiwan, BEIERSDORF has shown that at the time of MATEX’s filing of “NEAUVIA”, BEIERSDORF’s “NIVEA” has become well-known in the product field of cosmetics and sunscreen.

3.      TIPO further notes that both “NIVEA” and “NEAUVIA” demonstrate similar sequence of “N”, “V”, and “A”, that both trademarks start with “N” and end with “A”, and that the pronunciation of “NIVEA” is similar with that of “NEAUVIA”. Thus, there is medium degree of similarity between “NIVEA” and “NEAUVIA”.

4.      “NEAUVIA” is designated for use in medical service, in which NIVEA’s well-known products like skincare and beauty may be used or adopted. As such, consumers with ordinary degree of care will consider the designated services of “NEAUVIA” are related to products designated by BEIERSDORF’s “NIVEA”.

5.      Given that BEIERSDORF’s “NIVEA” is distinctive and well-known, that consumers are more familiar with BEIERSDORF’s “NIVEA”, that there is medium degree of similarity between “NIVEA” and “NEAUVIA”, and that “NEAUVIA” is designated for use in services that are related to NIVEA’s well-known cosmetics and beauty products, TIPO considers there is likelihood that consumers may be confused due to similarity between “NIVEA” and “NEAUVIA”. Thus, the registration of “NEAUVIA” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MXVKcmdoeW4vZ0sxd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German lighting brand OSRAM successful in trademark opposition against Etron’s “USRAM” trademark

On October 4, 2023, Taiwan’s IP Office (“TIPO”) canceled trademark “USRAM” in view of similarity with OSRAM GMBH’s (“OG”) well-known trademark “OSRAM” (no. 01270503 and 01172285, see below).

 

The contested trademark, “USRAM” (no. 02227904, see below), was filed by Etron Technology Inc. (“Etron”) on December 8, 2021, and granted on June 16, 2022, designated for use in goods under class 9, including computer, random access memory, face recognition device, microchip, portable flash memory, wafer, semiconductor device, integrated circuit board, microcircuit, etc. OG filed opposition on August 30, 2022, alleging that registration of Etron’s “USRAM” violates Article 30.1.10 and 30.1.11 of Trademark Act.

 

In its determination rendered on October 4, 2023, TIPO sided with OG, finding registration of “USRAM” violates at least Article 30.1.11 of Trademark Act:

 

1.    Article 30.1.11 of Trademark Act provides that 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”.

2.    On the status of well-known trademark, TIPO finds in OG’s favor in view of the brand’s long history, its continuous sale and marketing in Taiwan, and TIPO’s prior determination made in 2014 finding “OSRAM” a famous trademark among the relevant consumers. Based on the profound and continuous use of “OSRAM”, TIPO affirms that at the time Etron filed its application for “USRAM”, OG’s “OSRAM” is a well-known trademark among the relevant consumers in Taiwan.

3.    In terms of similarity, TIPO posits that Etron’s “USRAM” is similar with OG’s “OSRAM” for both trademarks end with the same English letters “SRAM”. The difference created by the initial letters (“U” v. “O”) is minor, because the shape of “U” is somewhat similar with “O”. As such, TIPO considers Etron’s “USRAM” visually and orally similar with OG’s “OSRAM”.

4.    Further, TIPO finds OG’s “OSRAM” more famous and distinctive among the relevant public, as “OSRAM” as a lighting brand has been registered and used as trademark since as early as 1962 in Taiwan. To the contrary, there is no evidence of trademark use submitted by Etron to support its distinctiveness and recognizability. Thus, TIPO concludes that consumers are more familiar with OG’s “OSRAM” than Etron’s “USRAM”.

5.    In view of the above, given that Etron’s “USRAM” is similar with OG’s “OSRAM”, that OG’s “OSRAM” is more distinctive and well-known among the relevant public, and that OG has expanded its brand territory from lighting solution to optical semiconductor products, TIPO determines that registration of Etron’s “USRAM” may cause confusion with OG’s famous trademark “OSRAM.” Hence, Etron’s “USRAM” is canceled accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTFpWkt5Nmt4NnV0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true