Polo/Lauren Secured Critical Win Against Parallel Importer on Appeal

 On May 14, 2026, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) handed the Polo/Lauren Company L.P. (“Polo/Lauren”) a key win on appeal, vacating the lower court’s determination on doctrine of exhaustion, and finding that Polo/Lauren’s famous trademarks (“Polo Ralph Lauren”, see below) were infringed by, Jie Sin Trading Co. Ltd. (Jie Sin Trading), the parallel importer of Polo/Lauren’s products.

1.        Background

This dispute, dated back to 2022, was derived from Jie Sin Trading’s importation and the way it resold Polo/Lauren’s products in Taiwan. According to Polo/Lauren, Jie Sin Trading, without proper license, illegally used Polo/Lauren’s aforesaid well-Known trademarks in reselling Ralph Lauren’s products at S-Outlet, a shopping mall managed and operated by another joint tortfeasor, ESSE Commerce Development Inc. (“ESSE”). Ralph Lauren sued Jie Sin Trading and ESSE based on violations of Trademark Act and Fair Trade Act before the IPC Court in 2022.

2.        IPC Court’s decision at the first instance level

In the first instance level, the IPC Court found that because the Polo/Lauren’s products resold by Jie Sin Trading at S-Outlet were genuine products, Polo/Lauren’s trademark rights were exhausted under Article 36 of Taiwan’s Trademark Act (111-Ming-Shang-Su-Zi No. 57). However, the IPC Court ruled that the way and style Jie Sin Trading used Ralph Lauren’s trademarks in its physical stores were deviant from common practice and misleading, so the court held Jie Sin Trading liable under Article 25 of Fair Trade Act (See: https://lnkd.in/gH85ktV4 ). Both Polo/Lauren and Jie Sin Trading appealed.

3.        IPC Court’s decision at the second instance level

On appeal, the IPC Court vacated its lower court’s finding, and determined that in addition to violating Fair Trade Act, Jie Sin Trading and ESSE also violated Polo/Lauren’s trademark rights. The IPC Court agreed that since the products resold by Jie Sin Trading at S-Outlet were genuine, they should be exempted from Polo/Lauren’s trademark rights under Article 36 of Trademark Act. However, the scope of exhaustion should be limited to the products themselves, not including Jie Sin Trading’s use of trademarks on the advertising materials, such as S-Outlet’s webpages, and the signage and other labels displayed in Jie Sin Trading’s physical stores. As Polo/Lauren correctly pointed out, when in the store or visiting the website, ordinary consumers could only see “Polo Ralph Lauren”. And even Jie Sin Trading’s name “JS’ Maxx” was presented somewhere in the store, it was less visible and clear (For example, see: https://www.s-outlet.com.tw/dm.php?i=82 and https://amy77.com/blog/post/s-outlet).

Jie Sin Trading argued that even if Polo/Lauren’s trademark rights were not exhausted, its use is merely indicative and should be fair use under Trademark Act. The IPC Court disagreed, finding that Jie Sin Trading’s use intentionally emphasized and highlighted the presence of Ralph Lauren’s trademarks on its webpages, signage, and billboard without identifying its company name, which is not aligned with fair trade and common practice. Indeed, in the entrance of the store and on its billboard, Jie Sin Trading’s company name was either not present or less visible. Under such circumstance, when entering the store or visiting the website, ordinary consumers would easily form the impression that Jie Sin Trading’s store is related to or affiliated with Polo/Lauren, which cause confusion with Polo/Lauren’s well-known trademarks.

While ESSE argued that it had no control over the way Jie Sin Trading used trademark, the IPC Court found these arguments unpersuasive. Because evidence showed that ESSE was at least in charge of the management of advertisements Jie Sin Trading used on S-Outlet’s webpage. To this end, the IPC Court found ESSE negligent in failing to regulate Jie Sin Trading’s use of “Polo Ralph Lauren” without identifying its company name in its proposed online advertising.

4. IPC Court’s conclusion on appeal

Based on the above reasons, in addition to the monetary and injunctive reliefs awarded by the lower court’s decision, the IPC Court further awarded Polo/Lauren NT$ 1.52 million against Jie Sin Trading and NT$ 2 million against ESSE based on trademark law violations respectively.

Source: 114-Ming-Shang-Shan-Zi No. 11 (IPC Court) https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,114%2c%e6%b0%91%e5%95%86%e4%b8%8a%2c11%2c20260514%2c1

PUMA SE’s Trademark Opposition for its PUMA Icon Fell Short

On April 30, 2026, Taiwan’s IP Office (“TIPO”) denied a trademark opposition initiated by PUMA SE, finding that the contested trademark was insufficiently similar to PUMA SE’s icons to cause confusion (Reg. No. 00087447, 00088125, 00088132, 00094620, 00131605, 00131624, 00766352, 01391153, 01604881, and 02018202, see below).

The contested trademark, “CARLYLE with Specialty Badge” (Reg. No. 02477074, see below), was filed by Genuine Parts Company (“Genuine Parts”) on July 30, 2024, and registered on August 16, 2025, covering goods in Class 6, 7, 20, and 25. On November 10, 2025, PUMA SE filed an opposition against the Class 25 goods, including clothing, hats, gloves, shirts, and jackets, alleging that the contested trademark is confusingly similar to its PUMA trademarks, and should be cancelled based on Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO did not rule in PUMA SE’s favor. In its determination on April 30, 2026, TIPO found that:

1.        Based on the extensive records of trademark use, PUMA SE’s cited trademarks, especially the “Jumping PUMA” and “PUMA and Jumping puma device” trademarks, had been well-known in the field of sneakers and apparel. As for PUMA SE’s “D with Jumping Cat Device” trademark, given that there was no corresponding evidence supporting its use, such trademark was not recognized as famous.

2.        On similarity, since felines are commonly seen animals, the differences in posture, movement, shape, stripes, and artistic style may create distinct visual impressions. Genuine Parts’ contested trademark mainly depicted a walking cat facing right, while PUMA SE’s trademarks mainly featured a jumping puma facing left. There are noticeable differences in movement direction, posture, body stripes, and tail design. Moreover, the inclusion of the text element “CARLYLE” further distinguishes the contested trademark from PUMA SE’s marks. Overall, the degree of similarity is low. 

3.        While the product category of the contested trademark partially overlaps with those of PUMA SE’s, the contested trademark is inherently distinctive. Additionally, for Class 25 product, TIPO noted that there are numerous registered trademarks also combining feline images with textual elements. The mere use of cat image in the contested trademark is insufficient to cause confusion with PUMA SE’s trademarks. Besides, there was no evidence of actual confusion or dilution submitted by PUMA SE.

4.        In conclusion, although PUMA SE’s “Jumping PUMA” and “PUMA” trademarks are well-known and there is partial overlap between the registered product categories, TIPO determined that the low degree of similarity, combined with the absence of evidence of actual confusion or dilution, and the inherent distinctiveness of the contested trademark, rendered confusion unlikely. PUMA SE’s opposition was denied accordingly.

Source:  

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNQI%2BOgB8kRpfsuZc%2B%2BcLusadQ1tqcR%2FKET

Italian Brand BVLGARI Prevailed in Trademark Opposition Against “OMNIAAA & device”

 Bulgari S.P.A. (“Bulgari”) successfully cancelled the contested trademark “OMNIAAA & device”, convincing the Taiwan’s IP Office (“TIPO”) that the contested trademark may cause confusion with Bulgari’s well-known brand “OMNIA” (See below).

The contested trademark, “OMNIAAA & device” (Reg. No. 02421893, see below), was filed by OMNI AAA Company Ltd. (“OMNIAAA Company”) on June 12, 2024, and registered on December 16, 2024. The contested trademark covered products in Class 3, such as toner, moisturizing lotion, face cream, facial cream, sunscreen, makeup remover, shampoo, etc. Bulgari filed a trademark opposition on March 14, 2025, alleging that the registration of the contested trademark violated Articles 30.1.11 and 30.1.12 of the Trademark Act. 

On March 31, 2026, TIPO sided with Bulgari, cancelling the contested trademark 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 may cause confusion with or harm to the reputation or distinctiveness of such a well-known trademark.

2. Based on extensive evidence of trademark use in Taiwan, including the voluminous sales records between 2021-2024, marketing campaigns from 2019 to 2023, and news reports on social media, webpages, and successful product launches since 2003, such as “Omnia Bvlgari”, “Omnia Crystalline”, “Omnia Coral”, and “Omnia Pink Sapphire”, TIPO was convinced that by the filing date of the contested trademark, Bulgari’s “OMNIA” had become well-known in the field of perfume and fragrance.

3. On similarity, TIPO considered the word “OMNIAAA” to be the dominant portion of the contested trademark and opined that “OMNIAAA” and the well-known “OMNIA” are visually and phonetically similar to each other, both share the same word “OMNIA”, with a minor difference in the use of repeating letters “A” in the contested trademark.

4. “OMNIA” as a trademark is highly distinctive and has become famous due to Bulgari’s continuous use. Although OMNIAAA Company argued that Bulgari’s evidence was flawed because it contained the use of other trademark “BVLGARI”, TIPO disagreed. By referring to the marketing materials and advertisements submitted by Bulgari, TIPO elaborated that “OMNIA” is clearly visible to the ordinary consumers, and that it should be acceptable to use two or more trademarks on a single product. Hence, Bulgari’s supporting evidence is admissible. 

In view of the above, given the well-known status of “OMNIA”, the similarity between the two trademarks, and the fact that the contested trademark was registered to products that similarly could be used to adjust body odor and improve hygiene, TIPO concluded that the contested trademark may cause confusion with Bulgari’s well-known “OMNIA”. The contested trademark was cancelled accordingly.

Source:  https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNQI%2BOjCMscrfuT3E7aSCODYDguldxDB7E3