Tory Burch prevailed in trademark opposition for its iconic “TT” logo

River Light V, L.P. (“River Light”), the trademark registrant of “Tory Burch” in Taiwan, successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel a device trademark that is too similar to its iconic “TT” logo (See below).

 

The contested trademark, no. 02285492 (see below), was filed by Sachia Nail Ltd. (“Sachia”) on August 10, 2022, and granted on March 16, 2023, covering products under class 3, such as mouthwash, air fragrance, bath soap for pet, etc. River Light filed opposition on June 16, 2023, citing violation of Article 30.1.11 of Trademark Act.

On October 30, 2024, TIPO ruled for River Light, finding Sachia’s device trademark violates Article 30.1.11 of Trademark Act:

1.      Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is “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”.

2.      With regard to the well-known status of River Light’s “TT” icon, TIPO noted that based on records of trademark use, since as early as 2004, River Light has been using the “TT” design on its products, including handbags, apparels, and shoes. Through the continuous use of such logo, TIPO confirmed that the “TT” logo has already become well-known among the relevant consumers when Sachia filed application for the contested trademark.

3.      As to similarity, both trademarks featured two letters of “T” embedded in a circle. Although the colors of the letters and the direction at which the letters pointed in the contested trademark were arranged differently, TIPO considered such variations minor, and insufficient to make the contested trademark distinguishable from River Light’s above famous trademark.

4.      Further, due to River Light’s profound use of trademark, TIPO found the cited “TT” trademark has gained strong recognizability, and is highly distinctive among the relevant consumers. Besides, River Light has been cooperating with other brands like Shiseido in providing new products like sun screen lotion and perfume. These products are related to personal hygiene, deodorizing, and cleaning, which are similar to the products designated by Sachia’s contested trademark.

5.      In view of the above, given that River Light’s “TT” trademark has been well-known, that the contested trademark is highly similar with River Light’s famous trademark, that the “TT” trademark is highly distinctive and applied to products that are related to those designated by the contested trademark, TIPO concluded that the registration of the contested trademark may cause confusion with River Light’s cited trademark.

 

As such, the registration of Sachia’s contested trademark is canceled based on Article 30.1.11 of Trademark Act.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3dvTXRJZ2VLRlZBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true