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.