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