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.
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