“NEAUVIA” found confusingly similar with “NIVEA”

 On July 23, 2024, Beiersdorf AG (“Beiersdorf”) prevailed in a trademark opposition against “NEAUVIA”, successfully convincing Taiwan’s IP Office (“TIPO”) that “NEAUVIA” may cause confusion with Beiersdorf’s well-known brand “NIVEA” (See below).

The contested trademark, “NEAUVIA” (no. 02191869, see below), was filed by MATEX Lab Switzerland SA (“MATEX”) on November 10, 2020, and granted on January 1, 2022, designated for use in various products under class 5, such as medical nutrition, protein nutritional supplements, chemical drug preparations, nutritional supplements, medical eye masks, medical preparations for hair care and skin treatment, etc. Beiersdorf filed opposition on April 1, 2022, alleging violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Beiersdorf in its determination based on Article 30.1.11 of Trademark Act, finding that:

1.        There is visual and verbal similarity between “NIVEA” and “NEAUVIA”, given that both start with “N” and end with “A”, and that both contain the same sequence of letters “N”, “V”, and “A”. Besides, the two trademarks both start with the same letter “N”, which tend to enhance the impression of similarity among ordinary consumers.

2.        TIPO notes that “NIVEA” is widely used in skin care products, and that “NEAUVIA” is used for products with medical purpose. However, TIPO considers the medical products designated by “NEAUVIA” is related to or associated with those by “NIVEA”, because skin care products like moisturizers, sunscreen, etc., are also relevant to the health, treatment, or beauty of skin. Further, it is usual for skin treatment medicine to be used in conjunction with skin lotion or sunscreen. As such, there is similarity or relevance between products designated by “NEAUVIA” and those by “NIVEA”.

3.        Based on prior cases and evidence of use, TIPO confirms that at the time when “NEAUVIA” is filed for trademark registration, “NIVEA” has already been well-known in the field of skin care products, and that consumers are more familiar with “NIVEA”.

4.        Considering that “NIVEA” is well-known and highly distinctive, that there is similarity between “NEAUVIA” and “NIVEA”, that the two trademarks are used in related or associated products that serve similar or related purposes, and that consumers are more familiar with “NIVEA”, TIPO concludes that there may be confusion caused among the relevant consumers. Therefore, “NEAUVIA” is canceled based on Article 30.1.11 of Trademark Act accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UXJpRi9iY0JzYjVXS2QvV3hrV3czdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Mayo Foundation successful in trademark opposition against Maywufa’s “INDIMAYO”

On July 31, 2024, Taiwan’s IP Office (“TIPO”) entered a decision in the favor of Mayo Foundation for Medical Education and Research (“Mayo Foundation”), finding registration of “INDIMAYO” may cause confusion with Mayo Foundation’s trademark “MAYO CLINIC” (no. 01797607 and no. 01799196, see below).

The contested trademark, “INDIMAYO” (no. 02306863, see below), was filed by Maywufa Co. Ltd. (“Maywufa”) on December 13, 2022, and granted on July 16, 2023, applied for use in goods under class 5, including drug for human use, nutrition supplements, medical shampoo, animal detergent, baby food, Chinese medicine, hair care, medical dietary supplements, etc. Mayo Foundation filed trademark opposition on October 13, 2023, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Mayo Foundation, determining that the contested trademark shall be canceled based on Article 30.1.10 of Trademark Act:

1.        TIPO first finds that both Maywufa’s “INDIMAYO” and Mayo Foundation’s “MAYO CLINIC” contain the word “MAYO”, which constitute the dominant portion of the respective trademarks. If “INDIMAYO” and “MAYO CLINIC” are used in the same or similar products or services, TIPO opines consumers may consider both trademarks represent the same supplier or affiliated business entities. Hence,Maywufa’s “INDIMAYO” is considered verbally, visually, and conceptually similar with Mayo Foundation’s above cited trademarks.

2.        As to the designated use of goods, TIPO finds Maywufa’s “INDIMAYO” is applied for use in goods such as drug for medical use, medical dietary supplements, medical shampoo, etc.; and Mayo Foundation’s “MAYO CLINIC” is applied for use in services such as health consultation, medical test, healthcare, and products such as diagnostic devices, medical devices, etc. While there is minor difference between the respective designated products and services, TIPO consider the products designated by Maywufa’s “INDIMAYO” related to or associated with those designated by Mayo Foundations’s “MAYO CLINIC”, because both serve similar function or purpose.

3.        Further, TIPO notes that Mayo Foundation’s “MAYO” is highly distinctive, and has been recognized as well-known trademark in previous TIPO’s determination. In other words, the relevant consumers are more familiar with Mayo Foundation’s “MAYO CLINIC” than Maywufa’s “INDIMAYO”.

4.        According to Article 30.1.10 of Trademark Act, a mark shall not be registered if such a mark is “being 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 the relevant consumers”. Since there is similarity between “INDIMAYO” and “MAYO CLINIC”, both trademarks are applied for use in related or similar products or services, and consumers are more familiar with Mayo Foundation’s “MAYO CLINIC”, TIPO concludes that consumers may be confused in view of the similarity between Maywufa’s and Mayo Foundation’s trademarks.

As such, Maywufa’s “INDIMAYO” is canceled based on Article 30.1.10 accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VFpPTWc2c28rSmhhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

POLO handed a partial win in its opposition against trademark “Huang-RL”

On June 28, 2024, Taiwan’s IP Office (“TIPO”) awarded the POLO/LAUREN COMPANY L.P. (“POLO”) a partial win in POLO’s trademark opposition against registered trademark “HUANG-RL”. In its determination, TIPO found for POLO by affirming that POLO’s trademarks “POLO JEANS CO RL RALPH LAUREN Flag Design” and “DOUBLE RL” (no. 00977603 and no. 02087671, hereafter “RL” trademarks, see below) may be confused in the category of clothing products due to the similarity of the contested trademark. 

However, TIPO denied POLO’s opposition based on its” POLO BY RALPH LAUREN”, “RALPH LAUREN”, and “RALPH LAUREN (Stylized)” trademarks (no. 00068357, no. 00069729, and no. 01420134, hereafter “RALPH LAUREN” trademarks, all see below), finding there should be no confusion caused.

The contested trademark, “Huang-RL” (no. 2303334, see below),was filed on September 5, 2022, and granted on June 16, 2023, designated for use in goods under class 25 (including children’s clothing, men’s and women’s clothing, coats, shirts, shoes, scarves, socks, etc.) and services under class 35 (including advertising, TV commercials, online advertising, internet marketing, online shopping, etc.) POLO filed opposition on September 15, 2023, alleging that registration of the contested trademark will cause confusion with POLO’s aforesaid “RL” and “RALPH LAUREN” trademarks.

TIPO partially agreed with POLO, finding that:

1.    In terms of similarity, POLO’s “RL” trademarks and the contested trademark all contain “RL”. Additionally, TIPO noted that in the contested trademark, the letters “R” and “L” should be the elements that form the strongest impression among the consumers, because “Huang” is just ordinary last name that is commonly used in Taiwan. Consumers’ attention would be attracted to “RL” upon seeing the contested trademark. As such, TIPO considered there should be medium degree of similarity between POLO’s “RL” trademarks and the contested trademark. However, TIPO found the similarity between POLO’s “RALPH LAUREN” trademarks and the contested trademark is quite low. The number of the letters, the way and the pattern the letters are arranged, and the pronunciation are all different.

2.    As to similarity between the designated products and services, TIPO found that for products under class 25, the contested trademark indeed may raise confusion among the relevant consumers, because POLO’s aforesaid “RL” trademarks are also applied for use on various kinds of apparel and accessories. However, POLO’s “RL” trademarks are not used for similar services. Although TIPO agreed that POLO’s “RALPH LAUREN” trademarks are used for similar advertising and transactional services, these trademarks are not similar with the contested trademark.

3.    In view of the above, given that the contested trademark is similar with POLO’s “RL” trademarks, and that both are distinctive and applied for use in similar clothing products, TIPO concluded that registration of the contested trademark for use in similar products may cause confusion with POLO’s “RL” trademarks. Nonetheless, for services under class 35, since the similarity between POLO’s “RALPH LAUREN” trademarks and the contested trademark is low, TIPO opined there should be no likelihood of confusion.

4.    While POLO further argued that its cited trademarks are famous and the contested trademark is filed based on intent to imitate POLO’s famous trademarks, TIPO found POLO’s statements lack supporting evidence. The evidentiary materials submitted by POLO for proving the status of well-known were all related to POLO’s other “POLO Player” trademarks, which are less relevant to the fame of POLO’s aforesaid cited trademarks. Besides, POLO also failed to raise any evidence showing the filing of the contested trademark was based on bad faith. Hence, TIPO could not find for POLO.

In conclusion, the contested trademark’s registration for products under class 25 is canceled due to similarity with POLO’s “RL” trademarks. As to services under class 35, TIPO found no likelihood of confusion, and denied POLO’s opposition accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WnRkRW94S2dQSTVxekx0eGxvMWs5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true    

Taiwan's IP Office did not find for "Superdry" in its trademark opposition against "Super+"

On July 10, 2024, Taiwan’s IP Office (“TIPO”) made a determination in favor of Gi-Co-Li Digital Marketing Co. Ltd. (”GCL”), finding GCL’s trademark “Super+” will not cause confusion with the famous apparel brand “Superdry” (no. 01472219, 01220154, 02055161, 02117209, and 01724579, all see below).

The contested trademark, no. 02249702 (see below), was filed by GCL on October 14, 2021, and granted on September 16, 2022, designated for use in goods under class 18, including various kinds of umbrella. On December 15, 2022, the then registrant of the aforesaid “Superdry” trademarks, DKH RETAIL LIMITED (“DKH”), filed opposition against GCL on grounds of Article 30.1.10, 30.1.11 and 30.1.12 of Trademark Act, alleging the registration of “Super+” will cause confusion with DKH’s famous “Superdry” trademarks among the relevant consumers.  

TIPO did not find for DKH in its determination on July 10, 2024:

1.    Based on the evidence of use submitted by DKH, including the news reports by ELLE, ET Today, records of sale in stores like outlets, department stores, and malls, and photos of stores established in Taiwan, TIPO confirmed that “Superdry 極度乾燥 （しなさい）” (no. 01472219) and “SUPERDRY” (no. 01220154) have achieved the status of well-known trademark.

2.    Nevertheless, TIPO found the similarity between GCL’s “Super+” and DKH’s cited trademarks is low. While all trademarks start with “Super”, DKH’s cited trademarks are followed by other various kinds of patterns, designs, or characters of other foreign languages. In addition, “Super+” also features a drawing of an umbrella, which further the visual difference. Taking all the elements into consideration, TIPO posited that the degree of similarity between “Super+” and the aforesaid “Superdry” trademarks is low.

3.    TIPO noted that DKH’s cited “Superdry” trademarks are also applied for use in similar umbrella products, which provide the same function for shelter from sun or rain. Meanwhile, consumers are more familiar with DKH’s “Superdry” trademarks due to its continuous use and marketing. However, TIPO also found the word “Super” has been used by others’ registered trademarks in similar umbrella products, such as “Super Bee” (no. 01100004), “SUPER TRAVELLER” (no. 01292638), and “Super” (no. 01128021). Hence, the use of “Super” as a trademark is less unique and its exclusivity would be narrower. Accordingly, consumers should be able to discern “Super+” from “Superdry”, and GCL’s “Super+” would be less likely to cause damage to the reputation and distinctiveness of DKH’s above cited “Superdry” trademarks.

4.    In view of the above, although “Superdry” is well-known and “Super+” was applied for use in similar umbrella products, the degree of similarity between “Super+” and “Superdry” is too low that ordinary consumers should be able to distinguish the two trademarks. Further, given the similarity between “Super+” and “Superdry” is low, TIPO was not convinced that GCL filed application with intent to imitate “Superdry”, and that registration of “Super+” would damage the reputation of “Superdry”.

DKH’s opposition is therefore denied by TIPO accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4d05ZZ0dYYTQxY0t4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Article 30 of Trademark Act:

A mark shall not be registered if such a mark is:

……..

(10)Being 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, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper (30.1.10);
(11)Being 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, unless the proprietor of the said well-known trademark or mark consents to the application (30.1.11);
(12)Being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application (30.1.12).