ASTON MARTIN notched a win in its opposition against trademark “Austin Marton”

On January 23, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of ASTON MARTIN LAGONDA LIMITED (“ASTON MARTIN”), finding the trademarks of the British sports cars brand(no. 01820352 and no. 02258155, see below) may be confused due to the registration of the contested trademark “Austin Marton”.

The contested trademark, “Austin Marton” (no. 02354336, see below), was filed on July 25, 2023, and granted on February 1, 2024, designated for use in products in class 14, including precious metals, watches, watch components, clocks, jewelry, gemstones, etc. ASTON MARTIN filed opposition on April 30, 2024, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with ASTON MARTIN based on Article 30.1.10 of Trademark Act, finding that:

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.      On similarity, TIPO noted that ASTON MARTIN’s trademarks feature embedded “ASTON MARTIN” within a pair of wings. As such, the embedded “ASTON MARTIN” should be the dominant portion. In this light, TIPO found the contested trademark “Austin Marton” visually and verbally similar to “ASTON MARTIN”, as both start with “A” and end with “N”, with similar arrangement of structure and sequence of letters.

3.      On the designated products, TIPO noted that the products designated by the contested trademark overlap with those by ASTON MARTIN’s trademarks. For example, ASTON MARTIN’s trademark no. 02258155, similarly, was applied for use on products like gemstones, clocks, jewelry, key chains, precious metal, cufflink, etc. TIPO considered they both cover timing instruments, precious metals, jewelry, and gemstones.

4.      On the strength of trademark, TIPO considered ASTON MARTIN’s trademarks highly distinctive, and noted that ASTON MARTIN has not only built its trademarks as a luxury sports cars brand, but has been teaming up with other watches manufacturers in delivering co-branded watches. On the other hand, there was little evidence submitted to support the use of the contested trademark. As such, TIPO determined that the relevant consumers should be more familiar with ASTON MARTIN’s trademarks.

5.      In view of the above, given the similarity between ASTON MARTIN’s trademarks and the contested trademark, the overlap of the designated products, the facts that “ASTON MARTIN” is highly distinctive that local consumers are more familiar with, TIPO concluded that registration of “Austin Marton” may cause confusion with ASTON MARTIN’s trademarks. Hence, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4L24zaHZpZHMzZlRidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fast fashion brand SHEIN secured its win in trademark dispute over “席恩 SHEEN ISSUE”

On February 5, 2025, the Petitions and Appeals Committee of Ministry of Economic Affairs (“Committee”) affirmed a determination of Taiwan IP Office (“TIPO”) in trademark opposition involving the iconic fashion brand “SHEIN” (no. 01957153, see below). The Committee took the same position as TIPO that the contested trademark shall be canceled in view of likelihood of confusion with the well-known trademark “SHEIN”.

The contested trademark, “席恩 SHEEN ISSUE” (no. 02219320, see below), was filed on August 19, 2021, and granted on May 1, 2022, designated for use in services in class 35, including retails service for cleaning products, beauty products, market survey, online shopping, advertising, TV shopping, etc. Roadget Business Pte Ltd. (“Roadget”) filed opposition on July 29, 2022, citing violations of Articles 30.1.10 and Article 30.1.11 of Trademark Act. On August 27, 2024, TIPO sided with Roadget on the ground of Article 30.1.11, finding the contested trademark may cause confusion with the well-known brand “SHEIN”.

On appeal, registrant of the contested trademark argued that TIPO’s similarity analysis on the contested trademark was flawed by overly focusing on letters “SHE” and “N” of “SHEEN” only, without due regard to the other decorative elements and designs presented in the contested trademark. Besides, the registrant engages in beauty care service, which should be distinguishable from Roadget’s fashion e-commerce platform. There should be no confusion caused by the registration of the contested trademark.

The Committee affirmed TIPO’s determination:

1.      Firstly, the Committee agreed that “SHEIN” as a trademark has been well-known in view of evidence showing SHEIN’s successful sales records (nearly US$ 10 billions), worldwide popularity (online businesses covering 220 countries), the viewership of its internet platform , and the record of SHEIN as the most downloaded APP in both iOS and Google Play.

2.      Secondly, considering the font size and the position, the most dominant element should be “SHEEN” in the contested trademark, which would leave ordinary consumers with the strongest visual impression. As such, it is not erroneous for TIPO to find similarity after comparing “SHEIN” and “SHEEN” in the contested trademark.

3.      As to the similarity between the designated services, the Committee found the services covered by the contested trademark, in their nature, are related to providing retail service to consumers, which is similar to the online shopping service covered by SHEIN. Besides, given the operation of e-commerce service involves market survey, internet advertising, etc., ordinary consumers will find the services designated by the contested trademark associated with SHEIN’s e-commerce business.

4.      In view of the above, given that SHEIN is well-known in the field of online fashion, that the contested trademark is similar to SHEIN, that the services designated by the two trademarks are overlapped, and that SHEIN is highly distinctive and more recognizable among the relevant consumers, the Committee confirmed that registration of the contested trademark may cause confusion with the well-known trademark SHEIN. As such, the appeal was denied accordingly.

 

Source:

1.      TIPO’s determination:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RHRHMWRpaWExaVVRNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

2.      The Committee’s determination:

https://cloud.tipo.gov.tw/S282/SS0/SS0201_SCN3.jsp?approNo=G01110367&docDate=114/02/05&type=1&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

3.      Article 30.1.11 of Trademark Act:

     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.

Taiwan’s Baseball Team Uni- Lions lost its opposition against trademark “TAIWAN LIONS”

Uni-President 7-ELEVEn Lions, a.k.a. Uni-Lions, is one of the most prestigious professional baseball teams in CPBL. The team is owned by the reputable Uni-President Corporate, and operated by President Professional Baseball Team Corp (“PPTC”). Over the years, PPTC has acquired numerous trademark registrations related to Uni-Lions in Taiwan, including no. 01871540, no. 01892596, and no. 01958435 (collectively referred to as the “Lion Logos”, see below).

On April 14, 2023, PPTC filed trademark opposition against trademark no. 02275802 (“TAIWAN LIONS”, see below), alleging that such trademark is too similar to the Lion Logos. The contested trademark, “TAIWAN LIONS”, was filed on July 12, 2022, and granted on January 16, 2023. “TAIWAN LIONS” was registered for use on products in class 25, including cloths, suits, sportswear, scarves, ties, gloves, etc.

The registrant of “TAIWAN LIONS” argued that there should be no violation of Trademark Act:

1.      “TAIWAN LIONS” is dissimilar to the Lion Logos.

2.      PPTC’s evidence is insufficient to prove the well-known status of Lion Logos.

3.      The word “Lion” is a common term that has been adopted by others as trademarks.

4.      The registrant represents a charitable group, and “TAIWAN LIONS” reflects the group’s nature and public interest-oriented purpose, which should be distinguishable from PPTC’s Lion Logos.

On December 31, 2024, Taiwan’s IP Office (“TIPO”) sided with “TAIWAN LIONS”, finding there should be no confusion caused by the registration of the contested trademark:

1.      On the status of well-known trademark, based on the records submitted by PPTC, including the coverage of sports news, webpages of Facebook, and other joint marketing campaigns with local banks and convenience stores, TIPO confirmed that at least trademark no. 01871540 should be well-known among the customers in the field of professional sports industry.

2.      As to similarity, TIPO found in the favor of “TAIWAN LIONS”, finding that while both “TAIWAN LIONS” and Lion Logos feature the word “lion” together with a lion image, there are other distinguishable elements presented in “TAIWAN LIONS”. These include the prominent blue “T” as a backdrop, the image of the Taiwan island, and the right-facing lion head with a mane of different color and style. Additionally, TIPO noted that there are other co-existing trademarks featuring similar combinations of elements for products in the same apparel category. Hence, using such elements does not necessarily render these trademarks resemble one another. In sum, TIPO concluded that the similarity between “TAIWAN LIONS” and Lion Logos should be low.

3.      TIPO agreed with PPTC that the products covered by “TAIWAN LIONS” overlap with those designated by the Lion Logos, and that Lion Logos are highly distinctive. However, TIPO noted that “TAIWAN LIONS” is also distinctive in its own right, and that there is no evidence showing the contested trademark was registered with intent to mimic PPTC’s well-known Lion Logos.

4.      Based on the above, considering the low degree of similarity between “TAIWAN LIONS” and Lion Logos, the fact that both trademarks are distinctive, and the lack of evidence showing actual confusion and bad faith, TIPO concluded that Lion Logos will not be confused with or diluted by the registration of “TAIWAN LIONS”. PPTC’s opposition was denied accordingly.

Notes:

1.      PPTC also cited other trademarks owned by the International Association Of Lions Clubs, including no. 00064860, no. 00077746, and no. 00077766. All are considered dissimilar by TIPO.

2.      Before 2024, Uni-Lions held the record of winning the most Championship Title. After being defeated in the 2024 Taiwan Series, this record is now tied by CTBC Brothers.   

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VkF1bkVlOGJyQzlXS2QvV3hrV3czdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Abercrombie successful in trademark opposition against “Absoluteam & Faith”

On December 30, 2024, Taiwan’s IP Office (“TIPO”) sided with Abercrombie in an opposition proceeding, finding the contested no. 02317287 trademark could cause confusion with the apparel brand’s iconic trademarks (no. 00452329, no. 00455927, no.00456086, no. 01291483, no. 01291484, no. 01994842, and no. 02075003, see below).

 

The contested trademark (no. 02317287, see below), was filed on December 8, 2022, and was granted on September 1, 2023, designated for use in goods under class 25, including clothes, sportwear, children’s clothing, headscarves, hats, socks, gloves, shoes, sweaters, jackets, etc.  Abercrombie filed opposition on November 27, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO ruled in Abercrombie’s favor based on Article 30.1.10:

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.    TIPO noted that the contested trademark features the combination of text and a drawing of deer. As to the deer, TIPO posited that the contour, positioning, color, and the eye-catching antlers bear similarity with Abercrombie’s moose logo. As to the text “Absoluteam & Faith”, TIPO found it visually and verbally similar to “ABERCROMBIE & FITCH” in that both start with “Ab”, and demonstrate similar structure and sequence of English letters. TIPO concluded that ordinary local consumers may overlook the minor differences, such as “Faith” v. “Fitch”, and find both trademarks similar with each other.

3.    As to the designated products, TIPO took the position that the contested trademark is applied for use in similar apparel products, since Abercrombie’s trademarks are also designated for use in jackets, socks, scarves, shirts, suits, etc. As such, the designated products of the contested trademark overlap with those of Abercrombie’s trademarks.

4.    Further, to prove consumers’ recognition and familiarity, Abercrombie submitted evidence including the sales records, webpages of its official website and IG, local news reports, and the advertising materials of its local physical stores, which TIPO found persuasive and supportive. In contrast, there is little evidence to show the actual use of the contested trademark. Given the high distinctiveness and the continuous use and marketing, TIPO found Abercrombie’s trademarks more recognizable than the contested trademark.  

5.    In light of the visual and verbal similarity between Abercrombie's and the contested trademarks, the overlap of the designated products, the high distinctiveness and familiarity of “ABERCROMBIE & FITCH” in the local market, TIPO concluded that registration of the contested trademark may cause confusion with Abercrombie’s trademarks among the relevant consumers. As such, the contested trademark was canceled by TIPO accordingly.   

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dXZvYzJucFB1WFFFdGlGbFNGbGhFUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Louis Vuitton prevailed in trademark opposition against “YILIBEAUTY 伊秝美學及圖”

On December 30, 2024, fashion giant Louis Vuitton successfully persuaded Taiwan’s IP Office (“TIPO”) that the registered trademark “YILIBEAUTY 伊秝美學及圖” should be canceled in view of likelihood of confusion with its iconic “LV” logos (no. 01587780, no. 01922370, no. 02285154, no. 02371232, no. 02371231, and no. 01790186, see below)

 (no. 02371231, and no. 01790186)(no. 01587780, no. 01922370, no. 02285154, and no. 02371232)

The contested trademark, “YILIBEAUTY 伊秝美學及圖” (no. 02365007, see below), was filed on September 11, 2023, and published on April 1, 2024, designated for use in products under class 3, including cosmetics, lotion, beauty serum, facial cleanser, facial mask, etc. Louis Vuitton filed opposition on June 28, 2024, citing violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Louis Vuitton’s favor on December 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.    TIPO noted that the contested trademark features an encircled “YL” positioned above English and Chinese texts of small font “YILIBEAUTY” and “伊秝美學”. Louis Vuitton’s iconic “LV”, on the other hand, features overlapping “L” and “V”. Considering their size and design, TIPO determined that the enlarged “Y” and “L” would be the dominant portion of the contested trademark. Additionally, TIPO found that the right side of the letter “Y” overlaps with the left side of the right-titled letter “L”, which would form a visual impression that is similar to Louis Vuitton’s “LV”. As such, TIPO considered the contested trademark visually similar with Louis Vuitton’s “LV” logo.

3.    As to the designated products, TIPO found both Louis Vuitton’s “LV” logos and the contested trademark cover cosmetics and cleanser of human body. Therefore, there is similarity or relevancy between the corresponding products designated by “LV” and the contested trademark.

4.    Further, based on evidence submitted by Louis Vuitton, including news reports and marketing materials, TIPO found that Louis Vuitton’s “LV” is highly distinctive, and that local consumers are more familiar with Louis Vuitton’s “LV” than the contested trademark.

5.    In view of the above, considering the similarity between “LV” and “YILIBEAUTY 伊秝美學及圖”, the overlap of the designated products, the high distinctiveness of “LV”, and that consumers are more familiar with Louis Vuitton’s logo, TIPO concluded that there exists likelihood of confusion per Article 30.1.10 of Trademark Act. Hence, the registration of the contested trademark was canceled accordingly. 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjVYLy9NaWRleG8wanBUR3FwQ2FoZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Starbucks successful in invalidation action against trademark “星爸爸 Starpapa”

On November 28, 2024, Taiwan’s IP Office (“TIPO”) ruled in favor of global coffee giant, Starbucks Corporation (“Starbucks”), finding the disputed trademark “星爸爸Starpapa” may cause confusion with Starbucks’ well-known “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” trademarks (see below).

 

The application of the disputed trademark, “星爸爸Starpapa” (no. 02289875, see below), was filed on June 6, 2022, and granted on April 1, 2023, designated for use in goods under class 30 (e.g., tea drinks, tea bag, coffee, coffee beans, bread, rice, instant noodles, etc.), and services under class 43 (e.g., restaurant, hotel, etc.). Starbucks filed invalidation action with the TIPO on May 13, 2024, citing, among the others, violations of Article 30.1.11 of Trademark Act.

TIPO ruled in Starbucks’ favor on November 28, 2024:

1.      Given that the registration of the contested trademark was published on April 1, 2023, Starbucks could not challenge the registration by opposition, which must be filed within 3 months after the contested trademark’s publication. As such, Starbucks filed invalidation action per Article 59 of Trademark Act, which provides that an interested party may file invalidation with the Registrar Office on the grounds that such registration falls under Article 29, Article 30, or Article 65.

2.      Per Article 30.1.11 of Trademark Act, a trademark 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.

3.      Here, based on the voluminous evidence submitted by Starbucks, including its worldwide trademark registrations, webpages, international awards, records of Starbucks’ 20 years of marketing in Taiwan, including the development of 500 local coffee shops, and TIPO’s prior determination, TIPO concluded that on the filing date of the contested trademark, “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” have already become well-known among the relevant consumers in the field of coffee industry.

4.      As to similarity, TIPO agreed with Starbucks that the contested trademark is similar to the Starbucks’ aforesaid well-known trademarks. On the one hand, “Starpapa” and “STARBUCKS” both share the same initial letters “star”, followed by letters with similar pronunciation (“papa” v.s “bucks”). On the other hand, “星爸爸” and Starbucks’ “星巴克” both start with the same Chinese character “星” (which means “star” in English), followed by characters with similar pronunciation (“爸爸” v.s. “巴克”). Thus, TIPO concluded that “星爸爸Starpapa” verbally and visually similar to Starbucks’ above cited famous trademarks.

5.      Further, TIPO noted that Taiwan’s consumers are more familiar with Starbucks’ trademarks, and that the products and services covered by “星爸爸Starpapa” are related to or associated with those designated by Starbucks’ trademarks. In deed, both are related to drink or food services that fulfill similar purposes for the consumers.

6.      In view of the above, considering the well-known status of Starbucks’ well-known trademarks, the similarity between “星巴克”, “STARBUCKS”, and “星爸爸Starpapa”, the profound recognition of Starbucks’ trademarks, and the overlap of the designated products and services, TIPO determined that the contested trademark shall be invalidated for likelihood of confusion with Starbucks’ well-known trademarks.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WFZ4SDNvWVJlYlphWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Under Armour prevailed in opposition for its “UA” logo before Taiwan’s IP Office

On December 10, 2024, sportwear brand Under Armour Inc. (“Under Armour”) successfully convinced Taiwan’s IP Office (“TIPO”) that trademark no. 02354614 shall be canceled due to being confusingly similar to Under Armour’s famous “UA” logos (no. 01070778, 01429810, 01510157, and 01520380, see below).

The contested trademark, no. 02354614 (see below), was filed on May 29, 2023, and granted on February 1, 2024, designated for use in goods under class 25, including jackets, pants, shirts, underwear, T-shirt, socks, suits, belts, sportwear, etc. Under Armour filed opposition on April 30, 2024, alleging violation of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Under Armour’s favor on December 10, 2024, based on Article 30.1.10:

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.      On similarity, TIPO found the contested trademark featured stylized character consisting of two intersecting U-form letters pointing to the opposite direction. And, like Under Armour’s “UA” logos, the contested trademark would form a visual impression that resembles letter “X” or “H”. As such, TIPO considered the contested trademark visually and conceptually similar to Under Armour’s “UA” logos.

3.      As to similarity of the designated goods, TIPO noted that both the contested trademark and Under Armour’s “UA” logos cover clothing and apparel products, which serve similar functions and overlap in terms of their customers, sales channels, or usage.

4.      As to consumer’s familiarity, TIPO found this factor tilted to Under Armour’s favor, given that Under Armour has submitted sufficient evidence of trademark use in support of the market recognition of its “UA” logos, including catalogues, webpages, sales records, etc. In contrast, there was no evidence submitted to support the use of the contested trademark.

5.      In light of the above, considering the similarity between the contested trademark and Under Armour’s “UA” logos, the overlap of the designated products, the facts that “UA” logos are distinctive and consumers are more familiar with Under Armour’s brand, TIPO determined that the registration of the contested trademark may cause confusion among the relevant consumers. The contested trademark was therefore canceled by TIPO accordingly.

 

Source:  https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a1BsSkpGeEpqU1NmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true