MLB successful in canceling trademark “M1” over likelihood of confusion with the well-known icon of NY Yankees

On January 24, 2025, MAJOR LEAGUE BASEBALL PROPERTIES, INC. (“MLB”) successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel trademark “M1”, for the contested trademark is confusingly similar with the famous icon of New York Yankees (no. 00426890, 00974460, 00153759, 00976954, 00990958, 02149872, and 02150656, see below, hereafter “Yankees trademarks”).

The contested trademark, “M1” (no. 02284002, see below), was filed on June 17, 2022, and granted on March 1, 2023, designated for use in services in class 35, including retail and wholesale for mobile phone accessories, clothes, shoes, electronic appliances, etc. MLB filed opposition against “M1” on June 1, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On January 24, 2025, TIPO ruled in favor of MLB based on 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 “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.      Firstly, TIPO affirmed the Yankees trademarks are well-known given the evidence showing MLB’s registration of series trademarks in Taiwan dated as early as 1988, the worldwide popularity of New York Yankees, the media coverage of Taiwanese pitcher Chien-Ming Wang, who played for New York Yankees and was the first Taiwanese pitcher who appeared in the MLB playoff, and the marketing and sales records of the relevant merch and baseball games.  

3.      On similarity, TIPO noted that the contested trademark features overlapping “M” and “1”, which bears strong visual similarity with the overlapping “N” and “Y” presented in the Yankees trademarks. The style, contour, and structure of “M1” all resemble those demonstrated in the Yankees trademarks.

4.      Further, TIPO found the Yankees trademarks are highly distinctive, and have been used in a variety of merch, including caps, T-shirts, shoes, socks, sports handbags, backpack, umbrellas, purses, toys, etc. Besides, these products are related to the retail and wholesale services designated by the “M1” trademark, which may cause consumers to draw connection between products represented by the Yankees trademarks and services designated by “M1”.

5.      In sum, given that the Yankees trademarks have been well-known by the filing date of the “M1” trademark, that “M1” is highly similar to the Yankees trademarks, that the Yankees trademarks are distinctive, and have established profound recognizability among the relevant consumers in Taiwan, TIPO concluded that the registration of “M1” may cause confusion with the famous Yankees trademarks. Hence, registration of “M1” was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Q00rZFJBdC9oeVJodlZOK3hUMlhhZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

ASTON MARTIN notched a win in its opposition against trademark “Austin Marton”

On January 23, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of ASTON MARTIN LAGONDA LIMITED (“ASTON MARTIN”), finding the trademarks of the British sports cars brand(no. 01820352 and no. 02258155, see below) may be confused due to the registration of the contested trademark “Austin Marton”.

The contested trademark, “Austin Marton” (no. 02354336, see below), was filed on July 25, 2023, and granted on February 1, 2024, designated for use in products in class 14, including precious metals, watches, watch components, clocks, jewelry, gemstones, etc. ASTON MARTIN filed opposition on April 30, 2024, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with ASTON MARTIN based on Article 30.1.10 of Trademark Act, finding that:

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 noted that ASTON MARTIN’s trademarks feature embedded “ASTON MARTIN” within a pair of wings. As such, the embedded “ASTON MARTIN” should be the dominant portion. In this light, TIPO found the contested trademark “Austin Marton” visually and verbally similar to “ASTON MARTIN”, as both start with “A” and end with “N”, with similar arrangement of structure and sequence of letters.

3.      On the designated products, TIPO noted that the products designated by the contested trademark overlap with those by ASTON MARTIN’s trademarks. For example, ASTON MARTIN’s trademark no. 02258155, similarly, was applied for use on products like gemstones, clocks, jewelry, key chains, precious metal, cufflink, etc. TIPO considered they both cover timing instruments, precious metals, jewelry, and gemstones.

4.      On the strength of trademark, TIPO considered ASTON MARTIN’s trademarks highly distinctive, and noted that ASTON MARTIN has not only built its trademarks as a luxury sports cars brand, but has been teaming up with other watches manufacturers in delivering co-branded watches. On the other hand, there was little evidence submitted to support the use of the contested trademark. As such, TIPO determined that the relevant consumers should be more familiar with ASTON MARTIN’s trademarks.

5.      In view of the above, given the similarity between ASTON MARTIN’s trademarks and the contested trademark, the overlap of the designated products, the facts that “ASTON MARTIN” is highly distinctive that local consumers are more familiar with, TIPO concluded that registration of “Austin Marton” may cause confusion with ASTON MARTIN’s trademarks. Hence, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4L24zaHZpZHMzZlRidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fast fashion brand SHEIN secured its win in trademark dispute over “席恩 SHEEN ISSUE”

On February 5, 2025, the Petitions and Appeals Committee of Ministry of Economic Affairs (“Committee”) affirmed a determination of Taiwan IP Office (“TIPO”) in trademark opposition involving the iconic fashion brand “SHEIN” (no. 01957153, see below). The Committee took the same position as TIPO that the contested trademark shall be canceled in view of likelihood of confusion with the well-known trademark “SHEIN”.

The contested trademark, “席恩 SHEEN ISSUE” (no. 02219320, see below), was filed on August 19, 2021, and granted on May 1, 2022, designated for use in services in class 35, including retails service for cleaning products, beauty products, market survey, online shopping, advertising, TV shopping, etc. Roadget Business Pte Ltd. (“Roadget”) filed opposition on July 29, 2022, citing violations of Articles 30.1.10 and Article 30.1.11 of Trademark Act. On August 27, 2024, TIPO sided with Roadget on the ground of Article 30.1.11, finding the contested trademark may cause confusion with the well-known brand “SHEIN”.

On appeal, registrant of the contested trademark argued that TIPO’s similarity analysis on the contested trademark was flawed by overly focusing on letters “SHE” and “N” of “SHEEN” only, without due regard to the other decorative elements and designs presented in the contested trademark. Besides, the registrant engages in beauty care service, which should be distinguishable from Roadget’s fashion e-commerce platform. There should be no confusion caused by the registration of the contested trademark.

The Committee affirmed TIPO’s determination:

1.      Firstly, the Committee agreed that “SHEIN” as a trademark has been well-known in view of evidence showing SHEIN’s successful sales records (nearly US$ 10 billions), worldwide popularity (online businesses covering 220 countries), the viewership of its internet platform , and the record of SHEIN as the most downloaded APP in both iOS and Google Play.

2.      Secondly, considering the font size and the position, the most dominant element should be “SHEEN” in the contested trademark, which would leave ordinary consumers with the strongest visual impression. As such, it is not erroneous for TIPO to find similarity after comparing “SHEIN” and “SHEEN” in the contested trademark.

3.      As to the similarity between the designated services, the Committee found the services covered by the contested trademark, in their nature, are related to providing retail service to consumers, which is similar to the online shopping service covered by SHEIN. Besides, given the operation of e-commerce service involves market survey, internet advertising, etc., ordinary consumers will find the services designated by the contested trademark associated with SHEIN’s e-commerce business.

4.      In view of the above, given that SHEIN is well-known in the field of online fashion, that the contested trademark is similar to SHEIN, that the services designated by the two trademarks are overlapped, and that SHEIN is highly distinctive and more recognizable among the relevant consumers, the Committee confirmed that registration of the contested trademark may cause confusion with the well-known trademark SHEIN. As such, the appeal was denied accordingly.

 

Source:

1.      TIPO’s determination:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RHRHMWRpaWExaVVRNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

2.      The Committee’s determination:

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=G01110367&docDate=114/02/05&type=1&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

3.      Article 30.1.11 of Trademark Act:

     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.

Taiwan’s Baseball Team Uni- Lions lost its opposition against trademark “TAIWAN LIONS”

Uni-President 7-ELEVEn Lions, a.k.a. Uni-Lions, is one of the most prestigious professional baseball teams in CPBL. The team is owned by the reputable Uni-President Corporate, and operated by President Professional Baseball Team Corp (“PPTC”). Over the years, PPTC has acquired numerous trademark registrations related to Uni-Lions in Taiwan, including no. 01871540, no. 01892596, and no. 01958435 (collectively referred to as the “Lion Logos”, see below).

On April 14, 2023, PPTC filed trademark opposition against trademark no. 02275802 (“TAIWAN LIONS”, see below), alleging that such trademark is too similar to the Lion Logos. The contested trademark, “TAIWAN LIONS”, was filed on July 12, 2022, and granted on January 16, 2023. “TAIWAN LIONS” was registered for use on products in class 25, including cloths, suits, sportswear, scarves, ties, gloves, etc.

The registrant of “TAIWAN LIONS” argued that there should be no violation of Trademark Act:

1.      “TAIWAN LIONS” is dissimilar to the Lion Logos.

2.      PPTC’s evidence is insufficient to prove the well-known status of Lion Logos.

3.      The word “Lion” is a common term that has been adopted by others as trademarks.

4.      The registrant represents a charitable group, and “TAIWAN LIONS” reflects the group’s nature and public interest-oriented purpose, which should be distinguishable from PPTC’s Lion Logos.

On December 31, 2024, Taiwan’s IP Office (“TIPO”) sided with “TAIWAN LIONS”, finding there should be no confusion caused by the registration of the contested trademark:

1.      On the status of well-known trademark, based on the records submitted by PPTC, including the coverage of sports news, webpages of Facebook, and other joint marketing campaigns with local banks and convenience stores, TIPO confirmed that at least trademark no. 01871540 should be well-known among the customers in the field of professional sports industry.

2.      As to similarity, TIPO found in the favor of “TAIWAN LIONS”, finding that while both “TAIWAN LIONS” and Lion Logos feature the word “lion” together with a lion image, there are other distinguishable elements presented in “TAIWAN LIONS”. These include the prominent blue “T” as a backdrop, the image of the Taiwan island, and the right-facing lion head with a mane of different color and style. Additionally, TIPO noted that there are other co-existing trademarks featuring similar combinations of elements for products in the same apparel category. Hence, using such elements does not necessarily render these trademarks resemble one another. In sum, TIPO concluded that the similarity between “TAIWAN LIONS” and Lion Logos should be low.

3.      TIPO agreed with PPTC that the products covered by “TAIWAN LIONS” overlap with those designated by the Lion Logos, and that Lion Logos are highly distinctive. However, TIPO noted that “TAIWAN LIONS” is also distinctive in its own right, and that there is no evidence showing the contested trademark was registered with intent to mimic PPTC’s well-known Lion Logos.

4.      Based on the above, considering the low degree of similarity between “TAIWAN LIONS” and Lion Logos, the fact that both trademarks are distinctive, and the lack of evidence showing actual confusion and bad faith, TIPO concluded that Lion Logos will not be confused with or diluted by the registration of “TAIWAN LIONS”. PPTC’s opposition was denied accordingly.

Notes:

1.      PPTC also cited other trademarks owned by the International Association Of Lions Clubs, including no. 00064860, no. 00077746, and no. 00077766. All are considered dissimilar by TIPO.

2.      Before 2024, Uni-Lions held the record of winning the most Championship Title. After being defeated in the 2024 Taiwan Series, this record is now tied by CTBC Brothers.   

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VkF1bkVlOGJyQzlXS2QvV3hrV3czdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true