Taiwan’s IP Office Sides with TWG Tea in Trademark Dispute

On May 1, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of popular tea brand TWG Tea, finding the contested trademark, although designated for use in different product categories, may still cause confusion with the well-known “TWG” trademarks (See below).

The contested trademark, “TWG” (no. 02410921, see below), was filed on April 21, 2024, and granted on November 1, 2024, covering products in Class 3, including facial cleansers, bath gel, soap, shampoo, hair conditioners, facial cream, lipsticks, body lotion, skin care products, etc. TWG TEA filed opposition on January 24, 2025, citing, among other grounds, violation of Article 30.1.11 of Trademark Act.

TIPO ruled in TWG Tea’s favor based on the following reasons:

1.      Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is being 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.      Here, based on the submitted evidence, including the development of physical stores in Taiwan, worldwide trademark registrations of “TWG”, and the continuous and ongoing media exposure and marketing between 2009 and 2020, including the joint campaigns with other cosmetic brands like Shiseido, TIPO affirmed that TWG Tea’s “TWG” trademarks had become well-known in the fields of tea, tea drinks, and relevant beverage services before the filing date of the contested trademark. On the other hand, given that the registrant of the contested trademark did not submit any evidence of use, TIPO considered the consumers are more familiar with TWG Tea’s trademarks.

3.      TIPO noted that the contested trademark consisted of the letters “TWG”, which are identical to the dominant wording in TEA TWG’s cited trademarks. It is evident that the contested trademark is highly similar to TWG Tea’s famous “TWG” trademarks.

4.      Although the contested trademark was designated for use in different product categories, TIPO observed that, in addition to relevant products like teapots, tea trays, and tea spoons, there were records showing that TWG Tea had collaborated with other cosmetic brands to promote products like fragrances, essences, and skin care items. Thus, TWG Tea is likely to expand its brand into cosmetic products.

5.      In view of the well-known status of “TWG”, the high degree of similarity, the familiarity of TWG Tea’s brand, and the diversification of merchandise, TIPO concluded that the contested trademark, even though designated for cosmetic products, may still cause confusion with TWG Tea’s famous trademarks. Thus, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhAc4QpvuDYGofCIPD1Q0MnIie8SsY

Lacoste loses trademark cancellation case in Taiwan

On May 2, 2025, Taiwan’s IP Office (“TIPO”) denied Lacoste’s cancellation action against Full Moon Brewworks Co. Ltd. (“Full Moon”), finding Full Moon’s contested trademark, although featuring a crocodile, not confusingly similar to Lacoste’s iconic crocodile logos (No. 00341288, No. 00353746, No. 00636650, and No. 02342889, see below).

The contested trademark, “CHA LAN WAN PALE ALE & device” (No. 02348419, see below), was filed by Full Moon, a beer brewery based in Thailand, on March 22, 2023. Full Moon’s application was granted on January 1, 2024, covering goods in Class 32, including various kinds of beers and beverages, such as dark beers, draft beers, non-alcoholic beers, lemon beers, sparkling water, soft drinks, malt drinks, etc. Lacoste filed cancellation on April 1, 2024, citing violation of Article 30.1.11 of Trademark Act.

TIPO entered its decision on May 2, 2025, finding low similarity and thus no confusion between Lacoste’s and Full Moon’s trademarks.

1.     TIPO first reviewed Lacoste’s evidence for supporting the alleged well-know status of its trademarks. While TIPO noted that Lacoste’s trademarks were once determined as well-known in 2009 and 2016 in the field of apparel, hats, and the relevant accessories, TIPO found the evidence was more than 7 years ago. On the other hand, the other records submitted by Lacoste merely showed it has been continuously using its trademarks in Taiwan. There is no other supporting evidence, such as advertising data, market share survey report, etc. As such, TIPO considered the reputation of Lacoste’s trademarks is limited and confined to the clothing sector.

2.     As to the similarity, TIPO was aware that both Full Moon’s and Lacoste’s trademarks include crocodile imagery. However, crocodile is merely a common animal, and TIPO noted that there are other elements in Full Moon’s trademark, such as “CHA LAN WAN” (which means king of crocodile in Thai), and the depiction of a woman in short skirt being embraced by the standing crocodile. Taking all the elements together as a whole, TIPO considered that consumers should be able to distinguish the two trademarks, and the similarity should be low.

3.     While TIPO agreed that Lacoste’s trademarks are distinctive and were used on other products, such as surfboard, bicycle, etc., TIPO found the evidence quite limited. TIPO considered these materials insufficient to prove a natural brand extension into beer and beverages. In the meantime, Full Moon’s trademark is also distinctive, since it is not related to the nature or function of the designated products.

4.     In light of the above, TIPO concluded that the fame of Lacoste’s trademarks is limited to clothing sector, that the similarity is low, that both trademarks are distinctive, and that there is no evidence showing Lacoste is likely to expand into the beer and beverages market. Accordingly, TIPO held that the registration of Full Moon’s trademark is unlikely to cause confusion among the relevant consumers. In addition, since the degree of similarity is very low, TIPO determined that the contested trademark is unlikely to dilute the distinctiveness or tarnish the reputation of Lacoste’s trademarks. 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOhAcwWoPuNYcb%2FbiVdG3GLhNqFuL2w