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