Taiwan’s Intellectual Property and Commercial Court sided with LOUIS VUITTON in its infringement action against MF Production Co.

On March 27, 2024, Taiwan’s Intellectual Property and Commercial Court (“TIPC”) found for the French fashion giant LOUIS VUITTON MALLETIER (“LV”), finding products sold by MF Production Co. (“MF”) infringed upon LV’s well-known trademarks (see below).

The defendant, MF, is a company that provides retail service for apparel and accessories. According to LV, MF uses logos and patterns that are highly similar with LV’s trademarks, and thus should be held responsible for trademark infringement. MF argues that its use of similar logos and marks are all of parody use (see below), and should be exempted from trademark infringement. TIPC disagrees.

In its judgment, TIPC firstly finds that the logos and marks used by MF on its products are all highly similar with LV’s asserted trademarks. Additionally, since LV’s asserted trademarks are well-known and have been used in a variety of kinds of goods, it is likely that consumers will be confused and mistakenly believe that products offered by MF are originated from LV.

As to MF’s defense of parody use, the court holds that to successfully raise parody use as defense, defendant must show that its use “manifests that the products have no relationship with LV’s trademark”, and that “consumers could, upon seeing defendant’s products, immediately understand that the products aim to tease, ridicule, or mock LV’s trademark.” After examining MF’s accused products, the court concludes that MF’s use does not constitute parody, because LV’s trademarks are all placed in the central or most dominant position, and consumers could hardly notice the accused products are MF’s, not LV’s. Besides, the court could find no sense of teasing or mocking based on MF’s use. Therefore, MF’s defense based on parody fails, and the court rules that MF is liable for infringing LV’s famous trademarks. MF is subject to injunction, and shall compensate LV for damages roughly NT$ 6.6 million.

Source: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c35%2c20240327%2c1 (111-Ming-Shang-Su-Zi No. 35, IPC Court)

Oral Care Giant Colgate Palmolive Successfully Fends Off Trademark Opposition Over Its “COLGATE KEEP”

On March 15, 2024, Taiwan’s IP Office (“TIPO”) rendered a determination in the favor of Colgate Palmolive Company (“Colgate”), finding Colgate’s registered trademark “COLGATE KEEP” (Reg. No. 02249801, see below ) would not cause confusion with the asserted trademark “keep keep”.

Colgate’s “COLGATE KEEP” was filed on January 18, 2022, and granted on September 16, 2022, designated for use in products like toothbrush. MEI CHI Enterprise Co. Ltd. (“MEI-CHI”), the registrant of the trademark “keep keep” (Reg. No. 01590217, see below), filed opposition against Colgate on November 29, 2022 , contending that registration of “COLGATE KEEP” will cause confusion with its “keep keep”, and thus has violated Article 30.1.10 of Trademark Act.

 TIPO sided with Colgate on March 15, 2024, finding that:

1.        Although both “COLGATE KEEP” and “keep keep” contain the same word “keep”, the initial word “COLGATE” in “COLGATE KEEP”, in TIPO’s opinion, carries specific weight. TIPO also notes that “COLGATE” has established great recognizability among the relevant consumers via Colgate’s longtime use and marketing, including series brands like “COLGATE ACTIBRUSH”, “COLGATE JUNIOR”, “COLGATE PRECISION”, etc. In contrast, TIPO notes that there are other registered trademarks ending with the word “keep” that are also used in similar personal hygiene or toothbrushes products. That is to say, in the relevant product field, consumers would pay more attention to the initial word “COLGATE”, and should be able to distinguish “COLGATE KEEP” from “keep keep” despite of the similarity over “keep”. As such, the overall similarity between “COLGATE KEEP” and “keep keep” should be low.

2.        TIPO finds both “COLGATE KEEP” and “keep keep” distinctive, because both trademarks are not related to the function or nature of the goods in which they are used. Further, TIPO notes that Colgate’s “COLGATE KEEP” is applied for use in toothbrush, which is identical to product that is designated by MEI CHI’s “keep keep”. Colgate’s “COLGATE KEEP” and MEI CHI’s “keep keep” are applied for use for the same product. The degree of similarity over the designated product is high.

3.        Even though MEI CHI has shown the distinctiveness of its “keep keep”, and the degree of similarity between the designated products, TIPO opines these factors are not enough to establish likelihood of confusion in light of the low degree of similarity between “COLGATE KEEP” and “keep keep”. Besides, there is no evidence of actual confusion. TIPO therefore concludes that consumers should be able to discern “COLGATE KEEP” and “keep keep”, and will not confuse MEI CHI’s “keep keep” with Colgate’s “COLGATE KEEP”.

Based on the reasons above, MEI CHI’s trademark opposition against Colgate is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bUt1Yjg4UTBBVzJQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

The Polo Lauren Company L.P. scored a win in trademark opposition for its famous polo player icon

In its determination rendered on February 29, 2024, Taiwan’s IP Office (“TIPO”) sided with fashion brand Polo Lauren Company (“PLC”), finding its iconic polo player trademarks (see below) may be confused due to registration of No. 02268824 trademark (the ‘824 trademark).

The ‘824 trademark (see below), was filed on March 22, 2022, and granted on December 16, 2022, designated for use in goods under class 25, including clothing, underwear, swimwear, socks, gloves, necktie, headscarves, hats, pantyhose, etc. PLC filed opposition on March 16, 2023, contending the registration of ‘824 trademark violates, among the others, Article 30.1.10 of Trademark Act.

TIPO found in PLC’s favor on February 29, 2024, reasoning that:

1.    Although the registrant of the’824 trademark argues that his trademark is actually featuring a horse rider holding a sword, TIPO opines such intention is not detectable when consumers view the ‘824 trademark. In fact, it is likely that consumers will only form the visual impressions that both PLC’s trademarks and the ‘824 trademark feature horse riders holding long objects. As such, TIPO considers ‘824 trademark visually and conceptually similar with PLC’s trademarks.

2.    Since ‘824 trademark is applied for use on products like apparel, clothing, and the related accessories, such products are similar with those designated by PLC’s trademarks. They serve similar function and meet similar need for consumers.

3.    Further, TIPO notes PLC’s trademarks have been used for a long time, and are recognized as well-known trademarks in a number of prior cases. Plus, there are more than 50 stores established in Taiwan marketing and selling PLC’s products. Therefore, TIPO posits that PLC’s trademarks are distinctive and consumers should be more familiar with PLC’s trademarks.

4.    In view of the above, considering the similarity between PLC’s trademarks and the ‘824 trademark, the similarity of products designated by ‘824 trademark and those designated by PLC’s trademarks, the distinctiveness of the PLC’s trademark, and consumer’s familiarity with PLC’s trademarks, TIPO agrees with PLC that registration of ‘824 trademark may cause confusion with PLC’s famous polo players trademarks. Therefore, ‘824 trademark is canceled by TIPO accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VEx5eTNxM0tQY2ZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

“ROCK 101” found similar with “Taipei 101”

On February 17, 2024, Taiwan’s IP Office (“TIPO”) sided with TAIPEI FINANCIAL CENTER CORP. (“TFC”) in its trademark opposition against “ROCK 101”, finding such trademark may be confused with TFC’s “Taipei 101” trademarks (See below).

The contested trademark, ROCK 101 (Reg. No. 02227032, see below), was filed by School of Rock, LLC (“SR”) on September 28, 2021, and granted on June 1, 2022, designated for use in goods under class 25 (cloths, apparel, shirt, sportswear, etc.) and services under class 41 (educational services, musical event, concert, live performance, seminar, recreational service, training and coaching services, etc.). TFC filed opposition action against SR on August 31, 2022, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

In its determination, TIPO finds “ROCK 101” should be subject to Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is 1) being identical with or similar to another person’s registered trademark or earlier filed trademark; and 2) to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated; and 3) hence there exists a likelihood of confusion on relevant consumers.

2.    On similarity, since both “Taipei 101” and “ROCK 101” include the numbers “1”, “0”, and “1”, TIPO considers “101” would still be the part that draws the attention of ordinary consumers. As such, TIPO opines “ROCK 101”is verbally and visually similar with “Taipei 101”. The degree of similarity is medium.

3.    As to the designated use of goods and services, TIPO finds “Taipei 101” is also used in similar kind of services like retails service for clothing, musical performance event, opera and drama performance, and sport event. These services are similar with and related to the products and services designated by “ROCK 101”.

4.    Taipei 101 tower is the skyscraper owned by TFC, and has been known as Taipei’s landmark for a long time. Through TFC’s continuous efforts in marketing and promoting over the years, including its involvement in a variety of recreational, artistic, and sports events, “Taipei 101” is not just a name of an iconic building, but also acquires distinctiveness and becomes well-known in services such as department store, shopping, and financial services. As such, TIPO affirms “Taipei 101” has acquired distinctiveness, and consumers are more familiar with TFC’s “Taipei 101”.

5.    Based on the reasons that there is medium degree of similarity between “Taipei 101” and “ROCK 101”, that both trademarks are applied for use in similar products and services, that “Taipei 101” demonstrates strong acquired distinctiveness, and that consumers are probably more familiar with “Taipei 101” than “ROCK 101”, TIPO concludes there is likelihood that consumers may confuse “ROCK 101” with “Taipei 101”. As such, “ROCK 101” is found confusingly similar and should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4TFViVEEvRldoWW9RNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Adidas secured a win in trademark opposition for its famous “Y-3” brand

On February 19, 2024, Taiwan’s IP Office (“TIPO”) sided with global sportswear giant Adidas, finding trademark registered by T-MAX Group. Inc. (“T-MAX”) may confuse Adidas’s famous trademark “Y-3” (See below).

The contested trademark (Reg. No. 02295294, see below) was filed on September 28, 2022, and granted on May 16, 2023, designated for use in goods under class 14, including jewelry, clock, watch, necklace, precious metal, cartoon watch, etc. Adidas filed opposition on August 11, 2023, citing violations of Article 30.1.10, and 30.1.11 of Trademark Law.

                                     

TIPO finds in Adidas’s favor, reasoning that:

1.        TIPO first affirms that Adidas’s “Y-3” has been a well-known trademark. According to the records, Adidas’s prestigious “Y-3” brand is originated from its innovative collaboration with the famous Mr. Yohji Yamamoto, and has been able to achieve great popularity and commercial success in fashion industry since its first release in 2002. The very first flagship store for “Y-3” in Taiwan was established in 2004, and such brand has gathered profound popularity in Taiwan since then. In its previous determination, TIPO also once recognized “Y-3” as a famous trademark. 

2.        TIPO notes the color of the backdrop of T-Max’s contested trademark is black, and the design and style of the letter “Y” and number “3” in the contested trademark are different. However, “Y-3” would still be the dominant portion of the two trademarks, and TIPO opines consumers’ focus would still be “Y-3”. Thus, the similarity between Adidas’s and T-Max’s trademarks is high. 

3.        Plus, Adidas’s “Y-3” is used in products like apparel and footwear, which, like the watches, necklace, and jewelry designated by T-Max, may be used to decorate one’s outfit and supplement each other. In sum, TIPO finds T-Max’s contested trademark also used in products that are similar with Adidas’s “Y-3”. 

4.        Given that Adidas’s “Y-3” is highly distinctive and famous among the consumers, that T-Max’s contested trademark is highly similar with Adidas’s “Y-3”, and that both Adidas’s and T-Max’s trademarks are designated for use in similar products, TIPO considers the registration of T-Max’s contested trademark may cause confusion with Adidas’s famous “Y-3” trademark. As such, TIPO canceled T-Max’s contested trademark accordingly.

Source: 

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WWRSTmNLd0xKaG5ReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office finds in the favor of TUDOR, canceling trademark featuring similar shield image

On January 30, 2024, Taiwan’s IP Office (“TIPO”) sides with luxury watch brand MONTRES TUDOR SA (“TUDOR”), finding its iconic shield trademark (Reg. No. 01061354) may be confused with Anzen Construction Co.’s (“Anzen”) registered logo (Reg. No. 02285880).

Anzen’s contested trademark (see below) was filed on July 29, 2022, and granted on March 16, 2023, designated for use in goods under class 14, including jewelry, badges, watch component, clock, watch, etc. TUDOR filed opposition on June 14, 2023.

TIPO sided with TUDOR, reasoning that:

1.    Although the exact color and contour of TUDOR’s shield is different from those of Anzen’s, consumers may still find them similar with each other, especially when the shield logo becomes small so it can be placed on the surface of a watch.

2.    TUDOR’s logo is designated for use in similar goods, such as watches, clocks, and the relevant components. Moreover, TUDOR’s shield logo is distinctive and consumers are more familiar with TUDOR. Thus, while the degree of similarity between Anzen’s and TUDOR’s shields is only medium, TIPO opines consumers may still find them confusingly similar if they are used in the same or similar kinds of products.

Based on the above, TIPO sided with TUDOR, and canceled Anzen’s trademark accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dWc4NWhPZGlOblpDZUd0OHRzTVd1UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled “Teaffiny” in view of its similarity with “Tiffany”

 On January 26, 2024, Taiwan’s IP Office (TIPO) canceled “Teaffiny”, finding such trademark confusingly similar with the iconic jewelry brand “Tiffany”.

TIFFANY AND COMPANY (“Tiffany”) filed opposition against trademark “Teaffiny” on April 15, 2021, contending registration of “Teaffiny” would cause confusion with its famous “Tiffany” trademarks (see below).

The contested trademark, “Teaffiny” (no. 02115450, see below), was filed on June 12, 2020, and granted on January 16, 2021, designated for use in goods under class 30, including tea and tea leave. On January 26, 2024, TIPO sided with Tiffany, finding “Teaffiny” should be canceled according to Article 30.1.11 of Trademark Act.

Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is 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.

Here, TIPO affirms Tiffany’s status as being a well-known trademark. In the field of jewelry, diamond, watches, and perfume, “Tiffany” is well-known at the time trademark application for “Teaffiny” was filed.

Further, TIPO notes that “Teaffiny” is similar with “Tiffany”. While the visual appearance is slightly different, TIPO is of the view that the pronunciation of “Teaffiny” is similar with that of “Tiffany”.

Furthermore, TIPO finds “Tiffany” as a trademark has been used in other kinds of products and services, such as purses, plates, glasses, cups, coffee, restaurant, etc. As such, “Tiffany” is not just used for jewelry and luxury items, but also products and service that are related to or associated with those designated by “Teaffiny”.

In view of the above, given that “Tiffany” is well-known and highly distinctive, that there is similarity between “Teaffiny” and “Tiffany”, and that “Tiffany” is also used in products that are associated with those designated by “Teaffiny”, TIPO determines consumers may confuse ”Teaffiny” with the famous “Tiffany” trademarks. Hence, registration of “Teaffiny” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bXdiQ29Ga1N2cmIyZm1UbmdtaTBJUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true