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/