Monster Energy’s trademark opposition for its M claw design fell short

On August 29, 2023, Monster Energy Company (“MEC”) filed trademark opposition against trademark No. 02299405 (the ‘405 trademark), contending that ‘405 trademark should be canceled because of the similarity with MEC’s iconic M claw design trademark (No. 01713839, see below).

 

The contested trademark, i.e., ‘405 trademark (see below), was filed by Yi-Shen International Corp. (“Yi-Shen”) on August 19, 2022, and granted on June 1, 2023, designated for use in services under Class 43, including restaurant, foods, and beverages services. MEC’s opposition is mainly based on Articles 30.1.10 and 30.1.11 of Trademark Act.

 

On November 8, 2024, Taiwan’s IP Office (“TIPO”) ruled in Yi-Shen’s favor, reasoning that:

1.      The Trademark Act provides that a mark shall not be registered if such a mark is “being identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumer” (Article 30.1.10), or “being 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” (Article 30.1.11).

2.      The ‘405 trademark consisted of Chinese characters “川常獨要” and three flaming red stripes. Although MEC’s M claw trademark also features three irregular stripes, the visual appearance is similar to the letter “M”, which is visually different from the ‘405 trademark. As such, the similarity between MEC’s M claw design and Yi-Shen’s ‘405 trademark is low.

3.      The designated products of MEC’s M claw trademark cover various kinds of drinks and beverages, like tea, milk, and alcohol. These products may be sold and supplied via the services designated by Yi-Shen’s ‘405 trademark. Thus, the products covered by MEC’s trademark is associated with or related to the services covered by Yi-Shen’s ‘405 trademark.

4.      Further, Yi-Shen’s ‘405 trademark possesses sufficient distinctiveness, which could be recognized by the consumers and distinguishable from MEC’s M claw trademark.

5.      Although MEC contented that its M claw trademark is famous and may be diluted by the registration of Yi-Shen’s ‘405 trademark, the evidence submitted by MEC was unable to back the alleged well-known status. TIPO found the sales records and news reports provided by MEC, such as marketing materials and invoices, insufficient to show the market share of the branded products, and fail to demonstrate the M claw trademark is actually perceived and well-regarded among the relevant consumers.

6.      In view of the above, given the lack of similarity, the lack of evidence showing the well-known status of the M claw trademark, and the lack of actual confusion or harm to MEC’s reputation, TIPO found the registration of Yi-Shen’s ‘405 trademark does not violate Article 30.1.10 and 30.1.11 Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OTdldlYvYVl5S3VmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Tory Burch prevailed in trademark opposition for its iconic “TT” logo

River Light V, L.P. (“River Light”), the trademark registrant of “Tory Burch” in Taiwan, successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel a device trademark that is too similar to its iconic “TT” logo (See below).

 

The contested trademark, no. 02285492 (see below), was filed by Sachia Nail Ltd. (“Sachia”) on August 10, 2022, and granted on March 16, 2023, covering products under class 3, such as mouthwash, air fragrance, bath soap for pet, etc. River Light filed opposition on June 16, 2023, citing violation of Article 30.1.11 of Trademark Act.

On October 30, 2024, TIPO ruled for River Light, finding Sachia’s device trademark violates 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 “being 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”.

2.      With regard to the well-known status of River Light’s “TT” icon, TIPO noted that based on records of trademark use, since as early as 2004, River Light has been using the “TT” design on its products, including handbags, apparels, and shoes. Through the continuous use of such logo, TIPO confirmed that the “TT” logo has already become well-known among the relevant consumers when Sachia filed application for the contested trademark.

3.      As to similarity, both trademarks featured two letters of “T” embedded in a circle. Although the colors of the letters and the direction at which the letters pointed in the contested trademark were arranged differently, TIPO considered such variations minor, and insufficient to make the contested trademark distinguishable from River Light’s above famous trademark.

4.      Further, due to River Light’s profound use of trademark, TIPO found the cited “TT” trademark has gained strong recognizability, and is highly distinctive among the relevant consumers. Besides, River Light has been cooperating with other brands like Shiseido in providing new products like sun screen lotion and perfume. These products are related to personal hygiene, deodorizing, and cleaning, which are similar to the products designated by Sachia’s contested trademark.

5.      In view of the above, given that River Light’s “TT” trademark has been well-known, that the contested trademark is highly similar with River Light’s famous trademark, that the “TT” trademark is highly distinctive and applied to products that are related to those designated by the contested trademark, TIPO concluded that the registration of the contested trademark may cause confusion with River Light’s cited trademark.

 

As such, the registration of Sachia’s contested trademark is canceled based on Article 30.1.11 of Trademark Act.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3dvTXRJZ2VLRlZBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fragrance brand Jo Malone secured a win in trademark opposition against “JOMAL”

On November 1, 2024, Taiwan’s IP Office (“TIPO”) ruled in the favor of prestigious fragrance brand Jo Malone, finding the contested trademark “JOMAL” should be canceled due to likelihood of confusion with Jo Malone’s iconic “Jo Malone” trademarks (Nos. 00915303, 00130444, 00153065, and 00153153; see below).

The contested trademark, “JOMAL” (No. 02252416; see below), was filed by Marian Biotechnology Co. Ltd. (“Marian”) on March 30, 2022, and granted on October 1, 2022, designated for use in goods in Class 3, including variety of cosmetics, body lotion, facial mask, eye cream, moisturizing lotion, skin care cream, body deodorant, cleansing lotion, etc. Jo Malone filed an opposition on December 29, 2022, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On November 1, 2024, TIPO ruled in Jo Malone’s favor based on 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 “being identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers.”

2.    Between the contested trademark “JOMAL” and the cited “Jo Malone” trademarks, TIPO found there exists medium degree of similarity. Specifically, both trademarks consist of the same characters “J”, “O”, “M”, “A”, and “L” and start with the same letters “JO”. TIPO opined that ordinary consumers would find Marian’s “JOMAL” verbally and visually similar with Jo Malone’s cited trademarks.

3.    As to the designated products, TIPO noted that Jo Malone’s cited trademarks were also applied to relevant products such as body lotion, skin care cream, fragrance, hair conditioner, cosmetics, etc. These products serve similar purposes and functions to those designated under Marian’s “JOMAL” trademark, as both related to skin care, body cleansing, and personal beauty.

4.    Further, based on prior cases and trademark search records, TIPO found “Jo Malone” has become well-known among the consumers in the fragrance and cosmetics industry. TIPO determined that “Jo Malone” is highly distinctive, and relevant consumers are more familiar with “Jo Malone” than “JOMAL”.

In view of the above, given the medium degree of similarity, the relatedness between the designated use of products, and the facts that “Jo Malone” is well-known and more recognizable by the relevant consumers, TIPO concluded that the registration of “JOMAL” may raise confusion among the consumers, and thus shall be canceled according to Article 30.1.10 of Trademark Act.

  

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VlZ6QXhJMzgvV0ZYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Apple Inc. prevailed in opposition for its “iCloud” trademark

On October 30, 2024, tech giant Apple Inc. (“Apple”) secured a victory from Taiwan’s IP Office (“TIPO”), persuading TIPO that the registration of no. 02360102 trademark should be canceled due to likelihood of confusion with Apple’s trademark “iCloud” (no. 01953374, see below).

The contested trademark, “SVICLOUD” (no. 02360102, see below), was filed by Hao You International Co. Ltd. (“HY”) on August 31, 2022, and granted on March 1, 2024, designated for use in goods under class 9, such as TV box, computer hardware, network router, internet equipment, communication equipment, audio and video selector, internet TV, set-top box. Apple filed opposition on May 31, 2024, alleging violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO ruled in Apple’s favor on October 30, 2024, based on 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 “identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers”.

2.    In terms of similarity, TIPO found HY’s contested trademark features a combination of a small cloud (on the left side of the mark) and the word “SVICLOUD”. Such arrangement is visually, conceptually, and verbally similar with Apple’s “iCloud” trademark, which also features a combination a cloud and the word “iCloud”.

3.    As to the designated products, TIPO noted that Apple’s “iCloud” is applied for use in products like computers, computer hardware, software, mobile phone, smart wearables, sound and video player, etc. These products, in TIPO’s opinion, serve functions and purposes that are similar to those designated by HY’s “SVICLOUD” trademark. Their targeted customers, functions, and sales channels overlap with each other.

4.    Moreover, TIPO recognized that Apple’s “iCloud” is highly recognizable and distinctive among the relevant consumers.

In view of the above, considering the similarity between Apple’s “iCloud” and HY’s “SVICLOUD”, the overlap of designated products, and the distinctiveness of “iCloud” trademark, TIPO concludes that registration of HY’s trademark may raise confusion among the relevant consumers. Thus, the contested trademark “SVICLOUD” is canceled by TIPO accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dytXeWlnY1hMaDh4RFFLdEdwai95dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Swiss luxury watch brand “IWC” prevailed in trademark opposition against “DWC ETERNITY”

On October 24, 2024, Taiwan’s IP Office (“TIPO”) ruled in the favor of RICHEMONT INTERNATIONAL SA (“RICHEMONT”), finding the contested trademark “DWC ETERNITY” should be canceled for likelihood of confusion with RICHEMONT’s well-known “IWC” (no. 00035143 and no. 00916674, see below).

The application for the contested trademark, “DWC ETERNITY” (no. 02275511, see below), was filed on July 15, 2022, and granted on January 16, 2023, designated for use in goods under class 14, including jewelry, watches, bracelets, watch boxes, etc. RICHEMONT filed opposition on April 14, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

TIPO ruled in favor of RICHEMONT based on Article 30.1.11, determining that:

1.    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”.

2.    Based on the evidence provided by RICHEMONT, including the records of global trademark registrations of “IWC”, the continuous coverage and exposure of “IWC” watches in reputable publications like “VOGUE”, “PRESTIGE”, and TIPO’s own prior determination, TIPO opines that as of the filing date of the contested trademark, RICHEMONT’s “IWC” has become well-known among the relevant consumers.

3.    In terms of similarity, while the contested trademark consists of “ETERNITY” and “DWC”, TIPO finds ordinary consumers would regard “DWC” as the dominant portion. In this context, “DWC” and “IWC” indeed share visual and phonetic similarities. Overall, the contested trademark, in its entirety, is still visually and verbally similar to RICHEMONT’s “IWC”.

4.    Additionally, TIPO notes that the contested trademark is applied for use in goods that are similar or closely related to those covered by RICHEMONT’s well-known “IWC” trademark, such as watches and the relevant accessories. For example, it is common for luxury watches to be adorned with jewelry and marketed as fashionable products.  

5.    Given that “DWC ETERNITY” is similar to “IWC” and used in similar watch products, that “IWC” is highly distinctive and well-known, that “IWC” is more recognizable among the relevant consumers, TIPO concludes that the registration of “DWC ETERNITY” may cause confusion with RICHEMONT’s famous “IWC” trademark. 

In view of the above, the contested trademark was canceled by TIPO accordingly. 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bk5OZ0k5aWMyVjJ0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Appeal Committee Reverses TIPO Ruling in Louis Vuitton's 'LV' Trademark Battle

On October 23, 2024, LOUIS VUITTON MALLETIER (“LOUIS VUITTON”), the registrant of trademark No. 01922370 (see below), successfully persuaded the Petitions and Appeals Committee (“Appeal Committee”) to vacate an unfavorable decision by Taiwan’s IP Office (“TIPO”).

 

The dispute arose out of LOUIS VUITTON’s opposition against trademark No. 02274728 (see below), which was filed on June 17, 2022 and granted on January 1, 2023, designated for use with goods in class 3 (i.e., cosmetics and skin care) and services in class 35 (i.e., advertising). LOUIS VUITTON filed opposition on March 21, 2023, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO ruled against LOUIS VUITTON, with the key reason being TIPO’s finding that the contested trademark was dissimilar to LOUIS VUITTON’s famous “LV” logo. LOUIS VUITTON subsequently challenged TIPO’s unfavorable decision before the Appeal Committee.

 

On October 23, 2024, Appeal Committee ruled in LOUIS VUITTON’s favor, determining that TIPO erred in finding the contested trademark dissimilar to LOUIS VUITTON’s famous “LV” logo.

 

In its ruling, the Appeal Committee noted that:

1.    While the contested trademark contains additional texts like “Vitoria&Jane” and “唯真”, the most dominant part is the overlapping characters “V” and “J”.

2.    After closely examining the style “V” and “J” are designed and displayed, the Appeal Committee noted that the two letters “V” and “J”, just like the “L” and “V” in LOUIS VUITTON’s famous logo, overlap. Besides, the letter “J” in the contested trademark is particularly tilted at an angle, although in the opposite direction, resembling the visual impression of the letter “L”.

3.    As such, the Appeal Committee came to the conclusion that the “V” and “J” in the contested trademark would still form visual impression that is similar to “L” and “V”. In its entirety, ordinary consumers would consider the contested trademark similar to LOUIS VUITTON’s well-known “LV” trademark.

 

Based on the finding of similarity, the Appeal Committee determined that the similarity between the contested trademark and the “LV” logo may lead to likelihood of confusion among the consumers. TIPO’s original decision was therefore vacated and the whole case was remanded accordingly.

 

Source:

TIPO’s decision: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTIrcENtSEhNYlIzaGpXRWZrVGd5dz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Appeal Committee’s ruling:

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=G01120109&docDate=113/10/24&type=1&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true 

Louis Vuitton scored a win in trademark opposition for its famous “LV” logo

 On September 25, 2024, fashion giant Louis Vuitton (“LV”) successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel a registered trademark deemed too similar to LV’s iconic logo “LV” (no. 00827212, see below).

 

The contested trademark, no. 02357789 (see below), was filed on April 28, 2023, and granted on February 16, 2024, designated for use in goods in class 25, including clothing, T-shirts, shoes, scarves, socks, gloves, etc. LV filed opposition on May 15, 2024, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO ruled in favor of LV on ground of 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 identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers.

2.    In this case, TIPO noted that the disputed trademark comprises large letters “L” and “M”, and smaller text reading “LUYI MI” and “Always with you.” Due to the significant contrast in the sizes of the letters, consumers would consider “L” and “M” as the dominant portion of the disputed trademark. Further, given that part of the letter “M” was blocked by the “LUYI MI” text block, consumers could easily interpret the disputed trademark as featuring “L” and “V”, instead of “L” and “M”. Therefore, TIPO concluded that the disputed trademark visually similar with LV’s cited trademark.

3.    As to the designated use of goods, TIPO found the products designated by the disputed trademark were similar with those designated by LV’s cited trademark. For example, LV’s trademark was similarly applied for use in products like clothing, shirts, socks, hats, and pants, which share similar functions and purposes, such as warmth and aesthetical appeal.

4.    Moreover, based on evidence of use, TIPO found LV’s logo has been well recognized by the relevant consumers. By contrast, there was no evidence submitted by the registrant of the disputed trademark to support the strength of the disputed trademark. As such, TIPO was of the view that consumers in Taiwan would be more familiar with LV’s logo.

5.    In view of the similarity between LV’s logo and the disputed trademark, the overlap of designated products, the high distinctiveness of “LV”, and consumers’ familiarity with "LV", TIPO concluded that the disputed trademark would cause confusion with the cited "LV" trademark. As a result, the registration of the disputed trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dnJ6aFh3N2RTVE1JSVhZYzEzWlF6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true