VOLVO Prevailed in Trademark Opposition Against “VOLOCO” Trademark

On July 24, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of auto giant Volvo, finding the contested trademark “VOLOCO” should be cancelled due to a likelihood of confusion with Volvo’s iconic brand “VOLVO” (Reg. No. 00111931, see below).

The contested trademark, “VOLOCO” (Reg. No. 02405141, see below), was filed on March 15, 2024, and granted on October 1, 2024, designated for use in goods in Class 12, including automobiles, components of automobiles, motorcycles, and components of motorcycles. Volvo filed opposition on December 30, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Volvo based on Article 30.1.10, reasoning that:

1.    On trademark similarity, the contested trademark “VOLOCO” and Volvo’s “VOLVO” both start with “VOL” and end with “O”, which makes the two trademarks visually and verbally similar to each other.

2.    On the designated products, TIPO noted that Volvo’s “VOLVO” also covered “automobiles, motorcycles, trucks, and the relevant components”, which resemble those designated by the contested trademark.

3.    Further, based on TIPO’s and Court’s prior decisions, and the evidence of continuous media coverage, including the webpages introducing Volvo’s vehicles throughout the period of 2010 and 2024, “VOLVO” as a trademark was highly distinctive and has established strong brand recognition in the auto industry. Therefore, consumers should be more familiar with “VOLVO”.

4.    In view of the above, given the similarity between the two trademarks, the overlap of product categories, and “VOLVO”’s high distinctiveness and strong brand recognition, TIPO concluded that the registration of “VOLOVO” would create confusion with “VOLVO” among the relevant consumers. Hence, registration of “VOLOCO” was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOnAs4XrPujCqRo2xVknAPqty39JR8F

Apple successfully cancelled “APP LEMAN” trademark in opposition proceeding

On July 31, 2025, Taiwan’s IP Office (“TIPO”) cancelled the registered trademark “APP LEMAN”, finding such trademark to be confusingly similar to Apple Inc.’s iconic brand “APPLE” (Reg No. 01457997, 01591959, and 01438475, see below).

The contested trademark, “APP LEMAN” (Reg. No. 02348755, see below) was filed on May 25, 2023, and granted on January 1, 2024, covering services in Class 35, including advertising, online advertising, retail and wholesale of computer accessories, online auctions, consumer analysis for commercial and market purposes, retail and wholesale of computer hardware, retail and wholesale of computer software, etc. Apple Inc. filed opposition on March 28, 2024, citing violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO sided with Apple Inc. on July 31, 2025, cancelling “APP LEMAN” based on Article 30.1.11 of Trademark Act:

1.        Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is “identical or similar to another’s well-known trademark, and hence there exists likelihood of confusion, or damage of distinctiveness or reputation of such well-known trademark.”

2.        Based on the evidence submitted by Apple Inc., including the worldwide trademark registrations of “APPLE”, prior court’s decisions, TIPO’s decisions, catalogues of products, annual reports, and the relevant media coverages such as Forbes, Interbrand, and Fortune, TIPO agreed that “APPLE” has become well-known among the relevant consumers when the contested trademark filed for registration in 2023.

3.        The registrant argued that the contested trademark was based on a combination of “APP”, an ordinary word, and “LEMAN” a word without ordinary meaning. However, TIPO noted that the evidence of trademark use indicated that the registrant actually presented the contested trademark as “APPLE MAN”, instead of “APP LEMAN”. Thus, TIPO held that ordinary consumers may easily perceive the contested trademark as a combination of “APPLE” and “MAN”, which is similar to Apple Inc.’s well-known trademark.

4.        Further, “Apple” as a trademark is highly distinctive, and has established strong recognition among the relevant consumers. Besides, TIPO noted that the services covered by the contested trademark, such as the online advertising, and retail and wholesale of computer hardwares and accessories, are relevant to the designated products of Apple Inc.’s above well-known trademark. Therefore, TIPO concluded that there is relatedness between the designated services of the contested trademark and the designated products of Apple Inc.’s trademark.

5.        In light of the above, considering the well-known status of “APPLE”, the similarity between the two trademarks, the strong brand recognition of “APPLE”, and the relatedness between the designated products and services, TIPO held that the registration of “APP LEMAN” may create confusion among the relevant consumers. As a result, “APP LEMAN” was cancelled accordingly.

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOnBMscrfsUYODJJvM0wYQ295638WRL

Mühlbauer’s attempt to trademark “ICON” was denied over similarity with Dunhill’s “DUNHILL LONDON ICON”

On July 17, 2025, the Petitions and Appeals Committee of the Ministry of Economic Affairs (“Committee”) rejected an appeal by the German dental technology company Mühlbauer Tech. GMBH (“Mühlbauer”), finding that Taiwan’s IP Office (“TIPO”) was correct in ruling that Mühlbauer’s application for “ICON” was confusingly similar to Dunhill’s “DUNHILL LONDON ICON.” (Reg. No. 01743082, see below).

 Mühlbauer filed its trademark application for “ICON” on November 10,2022, intended for use in goods in Class 3, covering cosmetics, toothpaste, mouthwash, breath fresheners, tooth whiteners, tooth-cleaning washes, and other non-medical oral hygiene products (Application No. 111081184, see below). TIPO cited Article 30.1.10 of the Trademark Act, and found the application confusingly similar to “DUNHILL LONDON ICON” held by Dunhill, denying the application on March 5, 2025. Mühlbauer appealed. 

Before the Committee, Mühlbauer argued that TIPO erred in dissecting and focusing merely on the letters “ICON” in the two trademarks. Taken as a whole, Dunhill’s trademark contains other visual elements, making Mühlbauer’s application dissimilar and unlikely to cause confusion. Additionally, Mühlbauer’s application was intended for use in tooth-whitening and mouth- cleaning products, which should be different from Dunhill’s designated products such as fragrance.

 

The Committee upheld TIPO’s position based on the following reasons:

1.        On similarity, although Dunhill’s cited trademark contained extra elements like “dunhill” and “LONDON”, the Committee noted that the word “ICON” still occupied a considerable portion, and may attract the visual attention of ordinary consumers. Accordingly, the Committee found that “dunhill” and “ICON” both constitute the dominant portion of the cited trademark, and that TIPO was correct in finding similarity between Mühlbauer’s “ICON” and Dunhill’s “DUNHILL LONDON ICON”.

2.        On the designated products, the Committee agreed with TIPO that both Mühlbauer‘s “ICON” and Dunhill’s cited trademark were designated for use in goods that related to personal beauty, hygiene, and deodorants. Based on common trade practice, consumers may find these products to have overlapping or associated purposes.

3.        While Mühlbauer argued that its “ICON” mark has been used in the market for a long time and that consumers should be able to distinguish the two trademarks, the Committee disagreed. It found that based on the records submitted by Mühlbauer, the products were related to medical supplies for dental use, which differ from the products designated by Mühlbauer’s current application. Moreover, since there was no supporting evidence like sales report, market share, or advertising materials to prove the fame of Mühlbauer’s “ICON” mark in the cosmetics category, the Committee found Mühlbauer’s argument based on long-term coexistence unpersuasive. 

4.        In view of the similarity between the trademarks, the relatedness between the designated products, the distinctiveness of Dunhill’s cited trademark, and the lack of supporting evidence for trademark use, the Committee found no error in TIPO’s decision to reject Mühlbauer’s application for “ICON”. As a result, Mühlbauer’s appeal was denied.

 

Source:

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjAsoQovvLzov%2B9zM3DWCGHGNeTkS8

The Committee’s decision: 

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250810_decisionDownload-A111403016_100910_158_ZtCP9Cu2Wl/

Prada Wins Trademark Appeal Over "MIU MIU" in Taiwan

On July 17, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (“Committee”) sided with fashion brand Prada, confirming that the contested trademark “NIUNIU衣櫥” would create confusion with the well-known “MIU MIU” trademark (No. 163308 and No. 836654, see below).

The contested trademark, “NIUNIU衣櫥“ (No. 02256499, see below), was filed by a Ms. Lin on March 7, 2022, and granted on October 16, 2022, designated for use in goods in Class 25, including underwear, lingerie, bras, etc. Prada filed an opposition on January 13, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On February 26, 2025, Taiwan’s IP Office (“TIPO”) ruled in favor of Prada, finding similarity between the trademarks, and cancelling “NIUNIU衣櫥” based on Article 30.1.10 of the Trademark Act. Ms. Lin appealed.

Before the Committee, Ms. Lin argued that the font, style, and pronunciation of the contested trademark were different from those of Prada’s “MIU MIU”. Additionally, Ms. Lin’s products were mainly sold via online platforms, which she claimed did not overlap with Prada’s sales channels. Moreover, Ms. Lin argued that the contested trademark itself had also become famous after the successful sales of the underwear products. There should be no confusion between the contested trademark and Prada’s “MIU MIU”.

The Committee did not find Ms. Lin’s arguments persuasive:

1.        On similarity of the trademarks, the Committee found that “MIU MIU” and “NIUNIU” constitute the dominant portion of both trademarks, and the way the letter “N” is pronounced resembles that of the letter “M”. Thus, in its entirety, the Committee found “NIUNIU衣櫥” visually and verbally similar to “MIU MIU”.

2.        On similarity of the products, the Committee noted that the contested trademark was designated for use in various kinds of underwear and bras, and that Prada’s “MIU MIU” trademarks were designated for use in clothing and retail services of apparel. Hence, the designated products of the contested trademark shared similar functions and sales channels with those designated by Prada’s “MIU MIU” trademarks. 

3.        Although Ms. Lin argued that her products were sold via the internet, which should be distinguishable from Prada’s “MIU MIU”, the Committee elaborated that the similarity analysis of the product should be based on the registered trademark’s designated goods, not on how the products were actually sold. 

4.        As for the evidence of trademark use proposed by Ms. Lin, the Committee found that it was either not properly dated, or failed to show the contested trademark “NIUNIU衣櫥” clearly. Thus, it was groundless for Ms. Lin to claim that the contested trademark had become well-known among the relevant consumers. In the meantime, there were prior TIPO’s and Court’s decisions affirming the well-known status of Prada’s “MIU MIU” trademarks. Consumers should be more familiar with “MIU MIU” than “NIUNIU衣櫥”. 

5.  In view of the similarity between the trademarks, the overlap of the designated products, and the well-known status and strong brand recognition of “MIU MIU”, the Committee found that TIPO was correct in cancelling “NIUNIU衣櫥”. As such, Ms. Lin’s appeal was rejected accordingly.

 

Source:

1.        TIPO’s decision: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjA8sXovu2Obze%2Fs2%2BIMVqqApPiNx%2B

2.    The Committee’s decision: https://pamsdmz.moea.gov.tw/pams-public/api/download/20250802_decisionDownload-A211403013_154509_557_MfVE5Y7m0z/