On February 19, 2025, Taiwan’s IP Office (“TIPO”) dismissed an opposition by German auto giant VOLKSWAGEN, finding its “VW” trademarks (no. 00888319 and no. 02132639, see below) would not be confused with the contested trademark “VSW”.
The
contested trademark, “VSW” (no. 02366144, see below), was filed by VISION
(SHANGHAI) BRAND MANAGEMENT CO., LTD. (“VISION”) on September 18, 2023, and granted
on April 1, 2024, designated for use in goods in class 25, including shoes, hats,
socks, sweater, clothes, vests, shirts, pants, etc. VOLKSWAGEN filed opposition
on June 27, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12
of Trademark Act.
1.
TIPO
noted that while both VISIONS’s “VSW” and VOLKSWAGEN’s “VW” feature the letters
“V” and “W”, the overall layout and visual design of the letters are noticeably
different. In VISIONS’s “VSW”, an extra “S” is placed in the center that links
the above “V” and the below “W”, which makes the entire visual impression
dissimilar to VOLKSWAGEN’s “VW”. Ordinary consumers with reasonable care shall
be able to distinguish VISIONS’s “VSW” from VOLKSWAGEN’s “VW”.
2.
On
the designated products, TIPO was aware that VOLKSWAGEN’s “VW” were applied for
use in apparel and related clothing, such as coats, scarfs, ties, suits, etc. These
products’ functions and purposes overlap with those of products designated by VISIONS’s
“VSW”. As such, TIPO agreed that the VISIONS’s “VSW” and VOLKSWAGEN’s “VW” were
applied for use in similar goods.
3.
TIPO
also found that evidence submitted by VOLKSWAGEN has sufficiently shown that its
“VW” trademarks are distinctive, and have achieved well-known status in Taiwan.
However, the similarity between VISIONS’s “VSW” and “VOLKSWAGEN’s “VW” is low,
and the scope of “VW” trademarks’ fame seems to concentrate in the auto
industry. Outside the categories of auto products and its relevant services, such
as services for restaurants, lease of real property, beauty and cosmetics, and medicines,
TIPO noted that there have been other co-existent trademarks that similarly feature
“V” and “W”. Therefore, there should be no risk of confusion or dilution for VISION
to register “VSW” in the category of apparel.
4.
Further,
there is no other evidence showing VISION’s registration of “VSW” was based on
bad faith to imitate “VOLKSWAGEN’s “VW”. The degree of similarity is low, and VISION’s
“VSW” was applied for use in clothing and apparel. TIPO considered the records
insufficient to prove that VISION’s registration was based on intent to take a
free ride on VOLKSWAGEN’s “VW”.
5.
In
view of the above, given that the similarity between VISIONS’s “VSW” and VOLKSWAGEN’s
“VW” is low, that both trademarks possess considerable distinctiveness, and that
there is no evidence showing risk of dilution and VISION’s bad faith to imitate,
TIPO concluded that registration of “VSW” does not violate Articles 30.1.10,
30.1.11, and 30.1.12 of Trademark Act.
Source:
1.
Article
30.1.10 of Trademark Act
A trademark 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, unless the
consent of the proprietor of the said registered trademark or earlier filed
trademark to the application has been given and is not obviously improper”.
2.
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, unless
the proprietor of the said well-known trademark or mark consents to the
application”.
3.
Article
30.1.12 of Trademark Act
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