Louis Vuitton scored a win in its trademark opposition against “LVYI & LY”

On December 29, 2023, Taiwan’s IP Office (“TIPO”) found in favor of French fashion giant LOUIS VUITTON MALLETIER (“LVM”), determining that the registration of “LVYI & LY” should be canceled for consumers may confuse such trademark with LVM’s iconic brand “LV” (no. 02285154 and no. 01790186, see below).

 

The contested trademark, “LVYI & LY” (no. 02303255, see below) was filed on August 1, 2022, and granted on June 16, 2023, designated for use in various goods and services under class 3 (hair conditioner, shampoo, human body cleanser, cosmetics, haircare products, etc.) and class 44 (hair dressing, beauty, skincare, barbering, hair salons, etc.). LVM filed opposition on September 5, 2023, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO finds in favor of LVM, reasoning that:

 

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is 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.    While there are additional English and Chinese letters presented in the contested trademark, it is clear that LVM’s “LV” and the contested trademark’s “LY” would constitute the dominant portion of the two trademarks, which consumers may find them visually similar with each other. In its entirety, “LVYI & LY” also demonstrate two overlapping English letters, which is similar with the style adopted by LVM’s “LV”. Thus, TIPO considers “LVYI & LY” similar with “LV”.

3.    TIPO also notes that LVM’s “LV” is designated for use in similar and related beauty and care products and services like hair lotion, hair spray, nail care, cosmetics, blush, lip pencil, eyeliner, eyelash, etc. These products and services are related to the purpose and function of products and services to which “LVYI & LY” is designated.

4.    TIPO further notes that in comparison to LVM’s voluminous evidence of use, the registrant of “LVYI & LY” provides no supporting materials to prove the distinctiveness and reputation of “LVYI & LY”. As such, based on the records at hand, TIPO concludes that consumers are more familiar with LVM’s “LV”, and that at the time of filing of “LVYI & LY”, LVM’s “LV” has been known among the relevant public.

 

In view of the similarity between “LV” and “LVYI & LY”, the similarity between the designated products and services, the distinctiveness of “LV”, and consumer’s familiarity with LVM’s “LV”, TIPO concludes that the registration of “LVYI & LY” may cause confusion with LVM’s “LV” among the relevant public. The registration of “LVYI & LY” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VzZvL0l6dUJxWVBUT2hFamhCNjkzQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true