2025年5月3日 星期六

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

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