Taiwan’s IP Office (“TIPO”) denied VOLKSWAGEN
‘s trademark opposition on August 15, 2024, finding the contested trademark “微灣生技VWON” will not
cause confusion with the auto giant’s cited trademarks “VW” and “VW (in circle)”
(See below).
The contested trademark, “微灣生技VWON” (Reg. No.
02306692, see below), was filed for registration on December 9, 2022, and
granted on July 16, 2023, designated for use in goods under class 3, including
lotion, sunscreen oil, hair dye, shampoo, hair conditioner, facial cleanser,
toothpaste, etc. VOLKSWAGEN filed opposition on October 16, 2023, alleging that
the registration of the contested trademark was filed with intent to mimic
(Article 30.1.12 of Trademark Act), and would cause confusion with its well-known
“VW” trademarks. (Article 30.1.10 and 30.1.11 of Trademark Act)
1.
While there is voluminous
evidence supporting the well-known status of VOLKSWAGEN’s “VW (in circle)”
trademarks, there seems to be little evidence showing the word mark “VW” has
been put in profound use by VOLKSWAGEN in Taiwan. In other words, the records
submitted by VOLKSWAGEN is insufficient to show that its word mark “VW” has
also been well-known at the time when the contested trademark was filed for
registration.
2.
In terms of similarity, the
contested trademark consists of English letters “VWON” and Chinese characters “微灣生技”, which makes it
visually, verbally, and conceptually distinguishable from VOLKSWAGEN’s cited “VW”
and “VW (in circle)” trademarks. When ordinary consumers see the contested
trademark, it would be difficult to draw connection with VOLKSWAGEN’s above
cited trademarks.
3.
TIPO further noted that VOLKSWAGEN’s
above cited trademarks cover products under class 3, such as perfume,
cosmetics, etc. These products are related to the goods designated by the
contested trademark, because both are sold in similar sales channels, and serve
related purposes or functions. Nonetheless, TIPO found there seems to be no
evidence suggesting VOLKSWAGEN ever used the cited trademarks in the field of
cosmetic products. As such, it is difficult to evaluate whether the relevant
consumers in the cosmetic market would be more familiar with VOLKSWAGEN’s cited
trademarks.
4.
In view of the above:
1)
With respect to Article 30.1.10
of Trademark Act, since the similarity between the contested trademark and VOLKSWAGEN’s
cited trademarks is low, there is no evidence indicating VOLKSWAGEN’s
trademarks are more recognizable in the cosmetic and beauty industry, there is
no evidence showing actual confusion, and the contested trademark does possess
certain degree of distinctiveness, TIPO concluded no confusion will be caused
by the registration of the contested trademark.
2)
While VOLKSWAGEN’s “VW (in
circle)” trademarks are well-known, such trademarks are not similar with the
contested trademark. Moreover, there is no evidence showing the reputation or
distinctiveness of VOLKSWAGEN’s cited trademarks will be harmed or diluted by
the contested trademark. TIPO posited that registration of the contested
trademark shall not violate Article 30.1.11 of Trademark Act.
3)
TIPO also noted that “VW” as a
word mark has commonly been used by some enterprises as part of their
registered trademarks for cosmetic products under class 3. Added to that, the
degree of similarity between the contested trademark and VOLKSWAGEN’s cited
trademarks is low. Therefore, the mere fact that the contested trademark also
contains “VW” is insufficient to prove that the contested trademark is filed
based on intent to mimic VOLKSWAGEN’s trademarks. Thus, there should be no
violation of Article 30.1.12 of Trademark Act.
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