Taiwan’s IP Office canceled “Teaffiny” in view of its similarity with “Tiffany”

 On January 26, 2024, Taiwan’s IP Office (TIPO) canceled “Teaffiny”, finding such trademark confusingly similar with the iconic jewelry brand “Tiffany”.

TIFFANY AND COMPANY (“Tiffany”) filed opposition against trademark “Teaffiny” on April 15, 2021, contending registration of “Teaffiny” would cause confusion with its famous “Tiffany” trademarks (see below).

The contested trademark, “Teaffiny” (no. 02115450, see below), was filed on June 12, 2020, and granted on January 16, 2021, designated for use in goods under class 30, including tea and tea leave. On January 26, 2024, TIPO sided with Tiffany, finding “Teaffiny” should be canceled according to Article 30.1.11 of Trademark Act.

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.

Here, TIPO affirms Tiffany’s status as being a well-known trademark. In the field of jewelry, diamond, watches, and perfume, “Tiffany” is well-known at the time trademark application for “Teaffiny” was filed.

Further, TIPO notes that “Teaffiny” is similar with “Tiffany”. While the visual appearance is slightly different, TIPO is of the view that the pronunciation of “Teaffiny” is similar with that of “Tiffany”.

Furthermore, TIPO finds “Tiffany” as a trademark has been used in other kinds of products and services, such as purses, plates, glasses, cups, coffee, restaurant, etc. As such, “Tiffany” is not just used for jewelry and luxury items, but also products and service that are related to or associated with those designated by “Teaffiny”.

In view of the above, given that “Tiffany” is well-known and highly distinctive, that there is similarity between “Teaffiny” and “Tiffany”, and that “Tiffany” is also used in products that are associated with those designated by “Teaffiny”, TIPO determines consumers may confuse ”Teaffiny” with the famous “Tiffany” trademarks. Hence, registration of “Teaffiny” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bXdiQ29Ga1N2cmIyZm1UbmdtaTBJUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true