Taiwan's IP Office Rejects Prada's Opposition Against "jiu jiu" Trademark

On March 31, 2025, Taiwan’s IP Office (“TIPO”) denied a trademark opposition filed by Prada against the registered trademark “jiu jiu”. TIPO found the contested trademark not confusingly similar to Prada’s “MIU MIU” trademark (no. 00832518, see below).

The contested trademark, “jiu jiu” (no. 02323938, see below), was filed by Home Product Inc. (“Home Product”) on February 3, 2023, and granted on October 1, 2023, designated for use in goods in class 3, including cosmetic cotton swabs, cotton pads, make-up removers, facial soap, baby soap, bath essences, bath gel, soap, natural essences, flower essences, etc. Prada filed opposition on December 28, 2023, citing violation of Article 30.1.10 of Trademark Act.

TIPO ruled in the favor of Home Product, determining that there should be no confusion caused by registration of “jiu jiu”:

1.      Article 30.1.10 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.      On the similarity of the trademarks, while both “jiu jiu” and “MIU MIU” consist of a word combination of two three-letter words, and both end with the letters “iu”, TIPO opined the difference in pronunciation (i.e., “/dʒju//dʒju/” vs. “/mju//mju/”) and visual impression caused by the initial letters (i.e., “j” vs. “M”) makes it unlikely for ordinary consumers to confuse Home Product’s contested trademark with that of Prada’s. The degree of similarity between the contested trademark and Prada’s cited trademark was deemed low.

3.      On the similarity of the designated products, TIPO agreed with Prada that the scope of products covered by Home Product’s “jiu jiu” overlaps with those designated by Prada’s “MIU MIU”, which also include various kinds of cosmetics and cleaning products, such as facial and body cleansers, soap, shampoo, conditioner, perfume, and essential oils.

4.      As to the distinctiveness of the trademarks, TIPO found both “jiu jiu” and “MIU MIU” quite distinctive, since both have no specific definition and are not related to the nature or function of the products they cover.

5.      On consumers’ familiarity, TIPO noted that the designated products of “jiu jiu” belong to the categories of personal hygiene and cosmetics. Although Prada did submit considerable evidence to prove the fame and recognition of the “MIU MIU” trademark, TIPO found the evidence mostly pertaining to Prada’s bags, shoes, apparel, and related accessories, not cosmetics and personal hygiene. Thus, TIPO was unable to determine if consumers in the relevant market were more familiar with Prada’s “MIU MIU” in relation to these specific goods.

6.      Based on the above, given the low degree of trademark similarity, the distinctiveness of the contested trademark, and the lack of evidence showing consumers’ familiarity with “MIU MIU” for the relevant product categories, TIPO concluded that the registration of Home Product’s “jiu jiu” would not cause confusion with Prada’s “MIU MIU”. Prada’s trademark opposition was denied accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RVNTWmFXK0gzNUsxd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fashion brand “DIOR” prevailed in trademark opposition against “Diora”

On March 25, 2025, Taiwan’s IP Office (“TIPO”) sided with Parfums Christian Dior (“Dior”), canceling the contested trademark “Diora” due to the likelihood of confusion with Dior’s iconic brand “DIOR” (see below).

The contested trademark, “Diora” (no. 02336174, see below), was filed by U.S. winery Delicato Vineyards LLC (“Delicato”) on April 14, 2023, and granted on November 16, 2023, designated for use on wine products. Dior filed opposition on February 2, 2024, citing violation of Article 30.1.11 of Trademark Act.

TIPO ruled in Dior’s favor, finding that:

1.      Per 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.”

2.      Regarding the fame of “DIOR”, based on Dior’s ongoing sales records, marketing materials, press releases, local news reports, social media campaigns, and prior supporting judicial and TIPO’s decisions, TIPO agreed with Dior that by the filing date of the contested trademark, “DIOR” had achieved well-known status among the relevant consumers in the cosmetic and fragrance markets.

3.      As for similarity, TIPO noted that the first four letters of the contested trademark are identical to “DIOR”, with minor differences in terms of the word case, font size, and the additional ending letter “a”. TIPO agreed with Dior that ordinary consumers would find “Diora” visually and verbally similar to “DIOR”.

4.      Although “DIOR” is originated from the name of Dior’s founder, TIPO noted that “DIOR” has obtained strong distinctiveness among consumers via Dior’s continuous and profound use in its cosmetic and perfume products. On the other hand, there was no evidence supporting the fame of or consumer familiarity with Delicato’s “Diora”. As such, based on the submitted evidence, TIPO opined that consumers should be more familiar with “DIOR”.

5.      Delicato argued that “Diora” is designated for use in wine products, so its goods did not overlap with those designated by “DIOR”. TIPO disagreed, elaborating that wine, cosmetics, and perfume are not, as Delicato contended, entirely unrelated. For example, TIPO noted that the leftover materials in the process of wine making, lees, are often used as ingredients for manufacturing cosmetic products, because of its rich antioxidants and polyphenols. Similarly, perfume has been commonly used in marketing and promoting wine products, such as wine pairing and perfume bartending. As such, consumers may still find the wine product designated by “Diora”, to a certain degree, related to Dior’s perfume and cosmetic products.  

6.      In view of the above, given the distinctiveness and well-known status of “DIOR”, the similarity between “DIOR” and “Diora”, the relatedness between the designated products, and the strong recognition among the relevant consumers, TIPO concluded that registration of Delicato’s “Diora” has violated Article 30.1.11 of Trademark Act. Hence, the contested trademark was canceled accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjCM8ToPsmGJyKrAyMg1Xzw3QxebXP

The Appeals and Petitions Committee of Taiwan’s MOEA Upholds Denial of Apple’s “APPLE AFTERBURNER” Trademark Application

On March 12, 2025, the Petitions and Appeals Committee of Ministry of Economic Affairs (“Committee”) affirmed the findings of Taiwan’s IP Office (“TIPO”), concluding that Apple Inc.’s (“Apple”) trademark application “APPLE AFTERBURNER” should be denied due to similarity with SEGA Corporation’s (“Sega”) “AFTER BURNER CLIMAX” and “AFTER BURNER” (no. 01213886 and no. 01213887, see below).

Apple Inc.’s application for “APPLE AFTERBURNER” (application no. 108070112, see below) was filed on October 25, 2019, designating computer cards used to accelerate video performance. Apple’s application was denied on September 26, 2024, by TIPO due to similarity with Sega’s aforesaid trademarks. Apple challenged TIPO’s denial to the Committee, arguing TIPO’s denial was erroneous in failing to take into consideration Apple’s strong brand, and that consumers are more familiar with Apple’s trademark.

The Committee found no error in TIPO’s decision to deny Apple’s trademark application:

1.      On similarity, the Committee agreed with TIPO that both Apple’s and Sega’s trademarks share the element “AFTERBURNER”, which is the dominant part of the trademarks. Although there are some differences such as the additional “APPLE” in Apple’s application, the space between “AFTER” and “BURNER” and the additional “CLIMAX” in Sega’s cited trademarks, these differences are deemed minor. The Committee opined that ordinary consumers would still consider “APPLE AFTERBURNER” conceptually, verbally, and visually similar to Sega’s “AFTER BURNER CLIMAX” and “AFTER BURNER”.

2.      The Committee further noted that Sega’s cited trademarks are registered for computer and video game software, which are related to the products designated in Apple’s trademark application. Both are peripheral products associated with computers that serve supplemental or associated purposes. Although Apple argued that the actual accelerator cards it supplies are only available to users of Apple’s Mac Pro products, making confusion unlikely. However, the Committee found such argument misplaced, emphasizing that when evaluating registrability of a trademark, the analysis of product similarity is based on the products designated in the trademark applicant, not the trademark applicant’s actual commercial practices. Apple’s arguments seemingly conflate the two.

3.      While Apple argued that its trademark is more famous and deserves stronger protection, the Committee found such contentions lack evidentiary support. Apple did submit some records, including news reports and product information. However, the Committee consider these records, at best, prove that Apple does supply accelerator card products, but insufficient to show the trademark “APPLE AFTERBURNER” has become well-known among the relevant consumers.

4.      In view of the above, given that the similarity between Apple’s “APPLE AFTERBURNER” and Sega’s cited trademarks is high, that Apple’s designated products overlap with those designated by Sega’s trademarks, and that Sega’s “AFTER BURNER” possesses considerable distinctiveness, the Committee concluded that allowing Apple’s trademark application may cause confusion with Sega’s cited trademarks. As such, the Committee dismissed Apple’s appeal.

 

Source:

TIPO’s denial:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4U1RnUnI4eThhVGgzaGpXRWZrVGd5dz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Committee’s decision:

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=T0440508&docDate=114/03/13&type=1&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Taiwan Court Affirmed Burberry’s Victory in Trademark Infringement Action On Appeal

In its decision rendered on March 20, 2025, Taiwan’s Intellectual Property and Commercial Court (the “IPC Court”) sided with Burberry Limited, affirming that LAICARFORE FASHION CLOTHING LIMITED COMPANY (“Laicarfore”) and ANIDA INTERNATIONAL CO., LTD. (“Anida”) should be liable for infringing the fashion brand’s well-known stripes icon (no.00906192 and no. 00905930, see below).

The defendants, Laicarfore and Anida, are vendors of dresses, shirts, skirts, coats, pants, and the relevant accessories. According to the records, Laicarfore and Anida contracted with factories in China for the supply of apparel products, and then imported and resold them through their own online platform (https://www.laicarfore.com.tw/) under the brand “Anita Su x LaiCarFore”. In around October 2021, Burberry discovered that the defendants were selling clothing bearing similar stripes icon on its website (See below). 

Given that Laicarfore had been sued by and settled with Burberry for trademark infringement for a couple of times, and that Laicarfore once again breached its written promise not to infringe Burberry’s trademark, Burberry decided to sue both Laicarfore and Anida for damages in the IPC Court. On July 31, 2024, in the first instance level, the IPC Court ruled in Burberry’s favor, finding Laicarfore and Anida jointly liable for trademark infringement, and awarding Burberry NT$ 3.98 million as damages, including NT$ 3 million as liquidated damages. Both Laicarfore and Anida appealed.

On appeal, Laicarfore and Anida argued that the stripes displayed on their products should not constitute trademark use, and that consumers will not be confused. On March 20, 2025, the IPC Court affirmed the finding of infringement of trademark, but reduced the liquidated damages to NT$ 2 million, finding the original awarded damages too excessive. The total awarded compensation became around NT$2,98 million. The IPC Court’s reasons are as follows:

1.    By examining the stripes and patterns displayed on the accused products, it is clear to the IPC Court that the background color similarly is beige, and the arrangements of thick and thin stripes resemble Burberry’s way of arrangement of red, black, and white stripes. The overall visual impression of the icon presented on the accused products is similar to Burberry’s aforesaid famous stripes logo.

2.    While there are other decorative elements presented on the accused products, these elements are randomly placed and not located in the most dominant position. In other words, consumers would still consider the colorful stripes the most dominant elements in the accused products.

3.    Although Laicarfore and Anida contended that the way they presented the color stripes should not constitute trademark use, the IPC Court disagreed, noting that the colorful stripes were clearly shown on Laicarfore’s and Anida’s website, and visible to general consumers when they shopped and purchased the products. As such, there should be intents on the part of Laicarfore and Anida to attract consumers by using similar icons on the accused products, which should constitute act of trademark use.

4.    On issue of damages, after considering that the defendants have made partial payments to compensate Burberry, that the defendants’ illegal profits have been forfeited, and the actual damages incurred upon Burberry, the IPC Court opined that the original award of NT$ 3 million as liquidated damages was too excessive. As such, the IPC Court exercised its discretionary power under Article 252 of Civil Code and reduced the liquidated damages to NT$ 2 million only.

Source:

113-Ming-Shan-Shan-Zi No. 16 (IPC Court, March 20, 2025), see: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,113%2c%e6%b0%91%e5%95%86%e4%b8%8a%2c16%2c20250320%2c1

 

Article 252 of Civil Code: “If the agreed penalty is disproportionately high, the court may reduce it to a reasonable amount.”