Prada prevailed in Petitions and Appeals Committee for its “MIU MIU” trademark

On May 14, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (“Committee”) affirmed the determination of Taiwan’s Intellectual Property Office (“TIPO”), finding the contested trademark “NIUNIU” may cause confusion with Prada’s iconic brand “MIU MIU” (No. 00163308 and No. 00836654, see below).

The contested trademark, “NIUNIU” (No. 02256501, see below) was filed on March 7, 2022, and granted on October 16, 2022, designated for use in goods in Class 25, including various kinds of underwear and accessories, such as bras, corsets, heating garments, women’s apparel, lingerie, etc. 

Prada filed opposition against “NIUNIU” on January 13, 2023, contending that registration of “NIUNIU” would cause confusion with its famous “MIU MIU” trademark. TIPO sided with Prada on December 31, 2024, finding “NIUNIU” confusingly similar to Prada’s “MIU MIU” trademark, and ordering cancellation of “NIUNIU” based on Article 30.1.10 of Trademark Act. Registrant of “NIUNIU” appealed, arguing TIPO was erroneous in finding similarity between the two trademarks, that the sales channels and targeted customers of “NIUNIU” are different, and that consumers should be able to distinguish the two trademarks given that “NIUNIU” has become a popular brand.

The Committee upheld TIPO’s decision, finding no error in TIPO’s determination:

1.        On similarity, the Committee ruled that both trademarks are made up by two same words, with minor differences in the font, space, and the initial letters. Besides, pronunciations of letters “N” and “M” both require nasal sound. The Committee found that TIPO was correct in finding visual and verbal similarity between “NIUNIU” and “MIU MIU.”

2.        On similarity of designated products, “MIU MIU” were designated for apparel, footwear, and the relevant accessories, which serve functions or purposes that are related to or overlapping with those of designated products of “NIUNIU”. While the registrant of “NIUNIU” argued that the sales channels of “NUINIU” are on-line network, and the products of “MIU MIU” are mainly supplied in physical stores, such variance is not sufficient to negate the relevancy of the designated products between the two trademarks. Besides, Prada did submit evidence showing that its products are also available via online store, the Committee found TIPO committed no error in its decision.

3.        The Committee further noted that there was voluminous evidence supporting the well-known status of “MIU MIU”, and agreed that on the filing date of “NIUNIU”, “MIU MIU” as a trademark has been well-known. The registrant argued that its “NIUNIU”, similarly, is famous among the relevant consumers. The Committee disagreed, determining that the evidence produced by “NIUNIU” lacked the backing of evidence like market share, sales revenue, and invoices. Thus, the Committee ruled that consumers should be more familiar with “MIU MIU”, and that Prada’s cited trademark should be awarded with greater protection than “NIU NIU”. 

4.        In view of the above, given the similarities of trademarks, relatedness of the designated products, fame of “MIU MIU”, and consumers’ familiarity, the Committee concluded that TIPO was correct in finding likelihood of confusion between “NIUNIU” and “MIU MIU”. TIPO’s determination was therefore upheld by the Committee.

 

Source: 

The Committee’s decision

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250524_decisionDownload-A211401030_175321_611_GYwd22c8xC/

TIPO’s decision: 

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNWI%2BOrAMwco%2FunxmxCMXMZuTh2cgQ44wqH

Ralph Lauren Wins in Taiwan Against Parallel Importer for Unfair Free-Riding

On April 30, 2025, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) ruled in the favor of The Polo/Lauren Company L.P. (“Ralph Lauren”), finding that although the apparel brand’s trademark rights were exhausted, the parallel importer’s use and presentation of the famous logo “POLO RALPH LAUREN” still constituted unfair free-riding and therefore violated Taiwan’s Fair Trade Act. 

Ralph Lauren sued Jie Sin Trading Co. Ltd. (“Jie Sin”), an importer of foreign brands, for trademark infringement and unfair competition in 2022. According to Ralph Lauren, Jie Sin, without proper license or permission, used Ralph Lauren’s famous trademarks “POLO RALPH LAUREN” (no. 00069730, no. 01686231, and no. 01737294, see below) without authorization in the sale of polo shirts in Jie Sin’s physical store located in S-Outlet, a shopping mall operated by co- defendant ESSE Commerce Development Inc. Ralph Lauren argued that such use would likely cause confusion, and was both deceptive and unfair.

Jie Sin contended that it is a parallel importer lawfully reselling genuine apparel products. All of the clothing sold at its S-Outlet store, according to Jie Sin, was sourced from Ralph Lauren in other countries. Besides, Jie Sin had placed its brand “JS’Maxx” on the store’s signage and banners showing “POLO RALPH LAUREN”, which should be sufficient to help the consumers identify the true source and avoid confusion.

The IPC Court rejected Ralph Lauren’s trademark infringement claim, but found that Jie Sin’s conduct amounted to unfair free-riding:

1.        On the trademark claim, the IPC Court elaborated that per Article 36 of Trademark Act, a trademark owner could not assert trademark right over products that have been lawfully placed in the market by itself or with its consent. Moreover, Taiwan adopts the doctrine of international exhaustion. Unless exceptional circumstances apply, a parallel importer’s resale of genuine products is generally exempt from trademark liability. 

2.        Here, the products sold in Jie Sin’s store were genuine Ralph Lauren apparel purchased abroad and imported into Taiwan. Although Jie Sin’s use of “POLO RALPH LAUREN” constituted trademark use, Ralph Lauren’s trademark rights on these products were deemed exhausted per Article 36 of Trademark Act.

3.        Having said the above, the IPC Court held that Jie Sin’s use of Ralph Lauren’s famous trademarks violated Article 25 of Fair Trade Act. More specifically, according to the guidelines issued by Fair Trade Commission, a parallel importer, even when selling genuine products, must not act in any way that may mislead ordinary consumers to believe that it is the authorized agent or distributor of the brand.

4.        Based on the submitted evidence, although Jie Sin included its logo “JS’Maxx” on the store’s signage, the mark was not as prominent or visible as the eye-catching “POLO RALPH LAUREN” brand. Further, the design of counter, shop window, and product display resembled those of a Ralph Lauren store. Under such circumstance, Jie Sin’s use of the famous “POLO RALPH LAUREN” trademark would mislead ordinary consumers to believe that Jie Sin’s sale of products are licensed by Ralph Lauren, which constitutes a free-ride on Ralph Lauren’s goodwill and reputation. 

(Source: https://2hyperlife.com/shinysun2022/)

Accordingly, the IPC Court ruled that Jie Sin shall cease using Ralph Lauren’s well-known trademarks and pay Ralph Lauren damages proportionate to the profits it earned through its unfair competition. 

 

Source: 111 Ming-Shan-Su-Zi No. 57 https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c57%2c20250430%2c1

Source: S-Outlet: https://www.s-outlet.com.tw/dm.php?i=181

Petitions and Appeals Committee Affirms Cancellation of Trademark Confusingly Similar to River Light’s “TT” Logo

On March 21, 2025, the Petitions and Appeals Committee of the Ministry of Economic Affairs (the “Committee”) sided with fashion brand River Light V L.P. (“River Light”), affirming the finding of Taiwan’s IP Office (“TIPO”) that the registered trademark no. 02285492 (“the ‘492 mark”) should be canceled due to confusion with River Light’s well-known “TT” logo (see below).

The contested trademark, no. 02285492 (see below), was filed by Sachia Nail Ltd. (“Sachia”), designated for use in goods in Class 3, covering non-human use cleanser, mouthwash, air freshener, and pet wash. River Light filed opposition on October 11, 2023. TIPO sided with River Light on October 30, 2024, finding Sachia’s 492 mark confusingly similar to River Light’s “TT” logo. Sachia challenged TIPO’s determination to the Committee.

Before the Committee, Sachia particularly argued the following:

1.        The orientations of the two “T”s in the ‘492 mark differ from those in River Light’s “TT” logo.

2.        River Light’s “TT” trademark is well-known in categories such as shoes, bags, apparel, and cosmetics, which are dissimilar to the goods covered by the ‘492 mark. 

3.        The documents submitted by River Light are insufficient to prove the well-known status of River Light’s “TT”.

The Committee rejected Sachia’s arguments based on the following reasons:

1.      On the well-known status of River Light’s “TT” logo, the Committee found River Light has provided sufficient evidence to prove the fame of its “TT” logo. River Light demonstrated continuous and extensive use of its Tory Burch brand, including the sales of fashionable items like shoes, bags, perfume, and sunglasses in major local department stores; widespread media exposures, marketing efforts, and the successful trademark registrations in numerous countries. The Committee affirmed TIPO’s determination that River Light’s “TT” logo is well-known when Sachia filed the application for the ‘492 mark.

2.        On similarity, the Committee noted that the two Ts in the ‘492 mark are left-right symmetrical, which is different from River Light’s up-down symmetrical. However, such difference is minor, and ordinary consumers would perceive “T”s as the dominant elements in both Sachia’s ‘492 mark and River Light’s “TT” logo. There is high degree of visual and conceptual similarity between the two trademarks.

3.        On the relatedness of the designated goods, the Committee acknowledged that River Light’s “TT” covers cosmetics, perfume, and fashionable items. However, the Committee elaborated that mouthwash and air refresher, like cosmetics and perfume, serve personal hygiene and deodorization purposes. Furthermore, non-human cleanser may be seen as related to the maintenance of fashionable bags and apparel. As such, it is not erroneous for TIPO to find relatedness between the designated products.

4.        In sum, considering the similarity between the two trademarks, the relatedness of the products, the well-known status of River Light’s “TT” logo, and the facts that ordinary consumers are more familiar with River Light’s “TT” logo, the Committee concluded that registration of ‘492 trademark does violate Article 30.1.11 of Trademark Act. TIPO’s decision was therefore affirmed by the Committee.   

 

Source:

Committee’s determination: https://pamsdmz.moea.gov.tw/pams-public/api/download/20250503_decisionDownload-A211312007_184141_504_9EjjKw9WPZ/

TIPO’s determination: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3dvTXRJZ2VLRlZBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true