Abercrombie successful in trademark opposition against “Absoluteam & Faith”

On December 30, 2024, Taiwan’s IP Office (“TIPO”) sided with Abercrombie in an opposition proceeding, finding the contested no. 02317287 trademark could cause confusion with the apparel brand’s iconic trademarks (no. 00452329, no. 00455927, no.00456086, no. 01291483, no. 01291484, no. 01994842, and no. 02075003, see below).

 

The contested trademark (no. 02317287, see below), was filed on December 8, 2022, and was granted on September 1, 2023, designated for use in goods under class 25, including clothes, sportwear, children’s clothing, headscarves, hats, socks, gloves, shoes, sweaters, jackets, etc.  Abercrombie filed opposition on November 27, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO ruled in Abercrombie’s favor based on Article 30.1.10:

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.    TIPO noted that the contested trademark features the combination of text and a drawing of deer. As to the deer, TIPO posited that the contour, positioning, color, and the eye-catching antlers bear similarity with Abercrombie’s moose logo. As to the text “Absoluteam & Faith”, TIPO found it visually and verbally similar to “ABERCROMBIE & FITCH” in that both start with “Ab”, and demonstrate similar structure and sequence of English letters. TIPO concluded that ordinary local consumers may overlook the minor differences, such as “Faith” v. “Fitch”, and find both trademarks similar with each other.

3.    As to the designated products, TIPO took the position that the contested trademark is applied for use in similar apparel products, since Abercrombie’s trademarks are also designated for use in jackets, socks, scarves, shirts, suits, etc. As such, the designated products of the contested trademark overlap with those of Abercrombie’s trademarks.

4.    Further, to prove consumers’ recognition and familiarity, Abercrombie submitted evidence including the sales records, webpages of its official website and IG, local news reports, and the advertising materials of its local physical stores, which TIPO found persuasive and supportive. In contrast, there is little evidence to show the actual use of the contested trademark. Given the high distinctiveness and the continuous use and marketing, TIPO found Abercrombie’s trademarks more recognizable than the contested trademark.  

5.    In light of the visual and verbal similarity between Abercrombie's and the contested trademarks, the overlap of the designated products, the high distinctiveness and familiarity of “ABERCROMBIE & FITCH” in the local market, TIPO concluded that registration of the contested trademark may cause confusion with Abercrombie’s trademarks among the relevant consumers. As such, the contested trademark was canceled by TIPO accordingly.   

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dXZvYzJucFB1WFFFdGlGbFNGbGhFUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Louis Vuitton prevailed in trademark opposition against “YILIBEAUTY 伊秝美學及圖”

On December 30, 2024, fashion giant Louis Vuitton successfully persuaded Taiwan’s IP Office (“TIPO”) that the registered trademark “YILIBEAUTY 伊秝美學及圖” should be canceled in view of likelihood of confusion with its iconic “LV” logos (no. 01587780, no. 01922370, no. 02285154, no. 02371232, no. 02371231, and no. 01790186, see below)

 (no. 02371231, and no. 01790186)(no. 01587780, no. 01922370, no. 02285154, and no. 02371232)

The contested trademark, “YILIBEAUTY 伊秝美學及圖” (no. 02365007, see below), was filed on September 11, 2023, and published on April 1, 2024, designated for use in products under class 3, including cosmetics, lotion, beauty serum, facial cleanser, facial mask, etc. Louis Vuitton filed opposition on June 28, 2024, citing violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Louis Vuitton’s favor on December 30, 2024 based on Article 30.1.10 of Trademark Act:

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.    TIPO noted that the contested trademark features an encircled “YL” positioned above English and Chinese texts of small font “YILIBEAUTY” and “伊秝美學”. Louis Vuitton’s iconic “LV”, on the other hand, features overlapping “L” and “V”. Considering their size and design, TIPO determined that the enlarged “Y” and “L” would be the dominant portion of the contested trademark. Additionally, TIPO found that the right side of the letter “Y” overlaps with the left side of the right-titled letter “L”, which would form a visual impression that is similar to Louis Vuitton’s “LV”. As such, TIPO considered the contested trademark visually similar with Louis Vuitton’s “LV” logo.

3.    As to the designated products, TIPO found both Louis Vuitton’s “LV” logos and the contested trademark cover cosmetics and cleanser of human body. Therefore, there is similarity or relevancy between the corresponding products designated by “LV” and the contested trademark.

4.    Further, based on evidence submitted by Louis Vuitton, including news reports and marketing materials, TIPO found that Louis Vuitton’s “LV” is highly distinctive, and that local consumers are more familiar with Louis Vuitton’s “LV” than the contested trademark.

5.    In view of the above, considering the similarity between “LV” and “YILIBEAUTY 伊秝美學及圖”, the overlap of the designated products, the high distinctiveness of “LV”, and that consumers are more familiar with Louis Vuitton’s logo, TIPO concluded that there exists likelihood of confusion per Article 30.1.10 of Trademark Act. Hence, the registration of the contested trademark was canceled accordingly. 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjVYLy9NaWRleG8wanBUR3FwQ2FoZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Starbucks successful in invalidation action against trademark “星爸爸 Starpapa”

On November 28, 2024, Taiwan’s IP Office (“TIPO”) ruled in favor of global coffee giant, Starbucks Corporation (“Starbucks”), finding the disputed trademark “星爸爸Starpapa” may cause confusion with Starbucks’ well-known “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” trademarks (see below).

 

The application of the disputed trademark, “星爸爸Starpapa” (no. 02289875, see below), was filed on June 6, 2022, and granted on April 1, 2023, designated for use in goods under class 30 (e.g., tea drinks, tea bag, coffee, coffee beans, bread, rice, instant noodles, etc.), and services under class 43 (e.g., restaurant, hotel, etc.). Starbucks filed invalidation action with the TIPO on May 13, 2024, citing, among the others, violations of Article 30.1.11 of Trademark Act.

TIPO ruled in Starbucks’ favor on November 28, 2024:

1.      Given that the registration of the contested trademark was published on April 1, 2023, Starbucks could not challenge the registration by opposition, which must be filed within 3 months after the contested trademark’s publication. As such, Starbucks filed invalidation action per Article 59 of Trademark Act, which provides that an interested party may file invalidation with the Registrar Office on the grounds that such registration falls under Article 29, Article 30, or Article 65.

2.      Per Article 30.1.11 of Trademark Act, a trademark 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.

3.      Here, based on the voluminous evidence submitted by Starbucks, including its worldwide trademark registrations, webpages, international awards, records of Starbucks’ 20 years of marketing in Taiwan, including the development of 500 local coffee shops, and TIPO’s prior determination, TIPO concluded that on the filing date of the contested trademark, “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” have already become well-known among the relevant consumers in the field of coffee industry.

4.      As to similarity, TIPO agreed with Starbucks that the contested trademark is similar to the Starbucks’ aforesaid well-known trademarks. On the one hand, “Starpapa” and “STARBUCKS” both share the same initial letters “star”, followed by letters with similar pronunciation (“papa” v.s “bucks”). On the other hand, “星爸爸” and Starbucks’ “星巴克” both start with the same Chinese character “星” (which means “star” in English), followed by characters with similar pronunciation (“爸爸” v.s. “巴克”). Thus, TIPO concluded that “星爸爸Starpapa” verbally and visually similar to Starbucks’ above cited famous trademarks.

5.      Further, TIPO noted that Taiwan’s consumers are more familiar with Starbucks’ trademarks, and that the products and services covered by “星爸爸Starpapa” are related to or associated with those designated by Starbucks’ trademarks. In deed, both are related to drink or food services that fulfill similar purposes for the consumers.

6.      In view of the above, considering the well-known status of Starbucks’ well-known trademarks, the similarity between “星巴克”, “STARBUCKS”, and “星爸爸Starpapa”, the profound recognition of Starbucks’ trademarks, and the overlap of the designated products and services, TIPO determined that the contested trademark shall be invalidated for likelihood of confusion with Starbucks’ well-known trademarks.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WFZ4SDNvWVJlYlphWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Under Armour prevailed in opposition for its “UA” logo before Taiwan’s IP Office

On December 10, 2024, sportwear brand Under Armour Inc. (“Under Armour”) successfully convinced Taiwan’s IP Office (“TIPO”) that trademark no. 02354614 shall be canceled due to being confusingly similar to Under Armour’s famous “UA” logos (no. 01070778, 01429810, 01510157, and 01520380, see below).

The contested trademark, no. 02354614 (see below), was filed on May 29, 2023, and granted on February 1, 2024, designated for use in goods under class 25, including jackets, pants, shirts, underwear, T-shirt, socks, suits, belts, sportwear, etc. Under Armour filed opposition on April 30, 2024, alleging violation of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Under Armour’s favor on December 10, 2024, based on Article 30.1.10:

1.      Article 30.1.10 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 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.      On similarity, TIPO found the contested trademark featured stylized character consisting of two intersecting U-form letters pointing to the opposite direction. And, like Under Armour’s “UA” logos, the contested trademark would form a visual impression that resembles letter “X” or “H”. As such, TIPO considered the contested trademark visually and conceptually similar to Under Armour’s “UA” logos.

3.      As to similarity of the designated goods, TIPO noted that both the contested trademark and Under Armour’s “UA” logos cover clothing and apparel products, which serve similar functions and overlap in terms of their customers, sales channels, or usage.

4.      As to consumer’s familiarity, TIPO found this factor tilted to Under Armour’s favor, given that Under Armour has submitted sufficient evidence of trademark use in support of the market recognition of its “UA” logos, including catalogues, webpages, sales records, etc. In contrast, there was no evidence submitted to support the use of the contested trademark.

5.      In light of the above, considering the similarity between the contested trademark and Under Armour’s “UA” logos, the overlap of the designated products, the facts that “UA” logos are distinctive and consumers are more familiar with Under Armour’s brand, TIPO determined that the registration of the contested trademark may cause confusion among the relevant consumers. The contested trademark was therefore canceled by TIPO accordingly.

 

Source:  https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a1BsSkpGeEpqU1NmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true