On August 31, 2026, Taiwan’s IP Office (“TIPO”)
ruled in favor of Staceypants Inc. (“Staceypants”), partially invalidating a contested
trademark after finding a likelihood of confusion with Staceypants’ iconic
brand (Reg. Nos. 02012562 and 02012563, see below).
The contested trademark, Reg. No. 02343533
(see below), was filed jointly by F a Design Co. Ltd. and Happyface Co. Ltd. on
April 14, 2023, and registered on December 16, 2023. The mark covered goods in
Class 18, including wallets, leather bags, purses, backpacks, handbag, pet
clothing, umbrellas, walking sticks, suitcases, etc. Staceypants filed
invalidation action on December 13, 2024, alleging that registration of the
contested trademark violated Articles 30.1.10 and 30.1.11 of Trademark Act.
1.
As a procedural matter, Staceypants
initiated an invalidation action rather than an opposition within the 3-month
opposition window. According to Article 57.2 of Trademark Act, Staceypants was
required to further submit evidence of actual use of its cited trademarks during
the 3 years prior to the filing of its invalidation request. In this respect,
TIPO found Staceypants’ evidence sufficient to prove its actual use in apparel,
handbags, footwear, and backpacks, but insufficient for goods such as umbrellas
and walking sticks. Accordingly, TIPO’s analysis would be limited to the scope
of goods supported by Staceypants’ proof of use.
2.
On similarity of trademark, TIPO
noted that both trademarks prominently feature a lady’s face, with hair tied in
a bun, sunglasses, and dark and prominent lips. Although there are differences
in face contour and the bangs, TIPO considered these insufficient to make the contested
trademark distinct from Staceypants’ icon. The degree of visual similarity is
considered to be moderate.
3.
On the designated goods, TIPO
observed that Staceypants genuinely used the cited trademarks in product
category covered by the contested trademark, such as apparel, clothing, and
handbags. Conversely, products such as umbrellas and walking sticks serve
distinct functions and purposes, and TIPO considered them less related to
fashion bags and apparel.
4.
TIPO recognized that Staceypants’
trademarks are distinctive, and Taiwan’s consumers are more familiar with
Staceypants’ trademarks in fashion and bags. Nonetheless, due to defects in
some of its submitted evidence, including the missing dates of use, and incomplete
quantitative sales and marketing metrics, TIPO considered that Staceypants failed
to meet the legal threshold for proving well-known status of its trademarks.
In light of the above, given the intermediate
degree of visual similarity, the partial overlap in the designated products,
and the established consumer familiarity, TIPO determined that consumer
confusion is likely regarding wallets, apparel, backpacks, and suitcases. The
contested trademark was cancelled for those overlapping categories. As to other
unrelated products where no proof of actual use or well-known reputation was
established, such as umbrellas and walking sticks, the registration remains
valid.
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