Mühlbauer’s attempt to trademark “ICON” was denied over similarity with Dunhill’s “DUNHILL LONDON ICON”

On July 17, 2025, the Petitions and Appeals Committee of the Ministry of Economic Affairs (“Committee”) rejected an appeal by the German dental technology company Mühlbauer Tech. GMBH (“Mühlbauer”), finding that Taiwan’s IP Office (“TIPO”) was correct in ruling that Mühlbauer’s application for “ICON” was confusingly similar to Dunhill’s “DUNHILL LONDON ICON.” (Reg. No. 01743082, see below).

 Mühlbauer filed its trademark application for “ICON” on November 10,2022, intended for use in goods in Class 3, covering cosmetics, toothpaste, mouthwash, breath fresheners, tooth whiteners, tooth-cleaning washes, and other non-medical oral hygiene products (Application No. 111081184, see below). TIPO cited Article 30.1.10 of the Trademark Act, and found the application confusingly similar to “DUNHILL LONDON ICON” held by Dunhill, denying the application on March 5, 2025. Mühlbauer appealed. 

Before the Committee, Mühlbauer argued that TIPO erred in dissecting and focusing merely on the letters “ICON” in the two trademarks. Taken as a whole, Dunhill’s trademark contains other visual elements, making Mühlbauer’s application dissimilar and unlikely to cause confusion. Additionally, Mühlbauer’s application was intended for use in tooth-whitening and mouth- cleaning products, which should be different from Dunhill’s designated products such as fragrance.

 

The Committee upheld TIPO’s position based on the following reasons:

1.        On similarity, although Dunhill’s cited trademark contained extra elements like “dunhill” and “LONDON”, the Committee noted that the word “ICON” still occupied a considerable portion, and may attract the visual attention of ordinary consumers. Accordingly, the Committee found that “dunhill” and “ICON” both constitute the dominant portion of the cited trademark, and that TIPO was correct in finding similarity between Mühlbauer’s “ICON” and Dunhill’s “DUNHILL LONDON ICON”.

2.        On the designated products, the Committee agreed with TIPO that both Mühlbauer‘s “ICON” and Dunhill’s cited trademark were designated for use in goods that related to personal beauty, hygiene, and deodorants. Based on common trade practice, consumers may find these products to have overlapping or associated purposes.

3.        While Mühlbauer argued that its “ICON” mark has been used in the market for a long time and that consumers should be able to distinguish the two trademarks, the Committee disagreed. It found that based on the records submitted by Mühlbauer, the products were related to medical supplies for dental use, which differ from the products designated by Mühlbauer’s current application. Moreover, since there was no supporting evidence like sales report, market share, or advertising materials to prove the fame of Mühlbauer’s “ICON” mark in the cosmetics category, the Committee found Mühlbauer’s argument based on long-term coexistence unpersuasive. 

4.        In view of the similarity between the trademarks, the relatedness between the designated products, the distinctiveness of Dunhill’s cited trademark, and the lack of supporting evidence for trademark use, the Committee found no error in TIPO’s decision to reject Mühlbauer’s application for “ICON”. As a result, Mühlbauer’s appeal was denied.

 

Source:

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjAsoQovvLzov%2B9zM3DWCGHGNeTkS8

The Committee’s decision: 

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250810_decisionDownload-A111403016_100910_158_ZtCP9Cu2Wl/

Prada Wins Trademark Appeal Over "MIU MIU" in Taiwan

On July 17, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (“Committee”) sided with fashion brand Prada, confirming that the contested trademark “NIUNIU衣櫥” would create confusion with the well-known “MIU MIU” trademark (No. 163308 and No. 836654, see below).

The contested trademark, “NIUNIU衣櫥“ (No. 02256499, see below), was filed by a Ms. Lin on March 7, 2022, and granted on October 16, 2022, designated for use in goods in Class 25, including underwear, lingerie, bras, etc. Prada filed an opposition on January 13, 2023, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On February 26, 2025, Taiwan’s IP Office (“TIPO”) ruled in favor of Prada, finding similarity between the trademarks, and cancelling “NIUNIU衣櫥” based on Article 30.1.10 of the Trademark Act. Ms. Lin appealed.

Before the Committee, Ms. Lin argued that the font, style, and pronunciation of the contested trademark were different from those of Prada’s “MIU MIU”. Additionally, Ms. Lin’s products were mainly sold via online platforms, which she claimed did not overlap with Prada’s sales channels. Moreover, Ms. Lin argued that the contested trademark itself had also become famous after the successful sales of the underwear products. There should be no confusion between the contested trademark and Prada’s “MIU MIU”.

The Committee did not find Ms. Lin’s arguments persuasive:

1.        On similarity of the trademarks, the Committee found that “MIU MIU” and “NIUNIU” constitute the dominant portion of both trademarks, and the way the letter “N” is pronounced resembles that of the letter “M”. Thus, in its entirety, the Committee found “NIUNIU衣櫥” visually and verbally similar to “MIU MIU”.

2.        On similarity of the products, the Committee noted that the contested trademark was designated for use in various kinds of underwear and bras, and that Prada’s “MIU MIU” trademarks were designated for use in clothing and retail services of apparel. Hence, the designated products of the contested trademark shared similar functions and sales channels with those designated by Prada’s “MIU MIU” trademarks. 

3.        Although Ms. Lin argued that her products were sold via the internet, which should be distinguishable from Prada’s “MIU MIU”, the Committee elaborated that the similarity analysis of the product should be based on the registered trademark’s designated goods, not on how the products were actually sold. 

4.        As for the evidence of trademark use proposed by Ms. Lin, the Committee found that it was either not properly dated, or failed to show the contested trademark “NIUNIU衣櫥” clearly. Thus, it was groundless for Ms. Lin to claim that the contested trademark had become well-known among the relevant consumers. In the meantime, there were prior TIPO’s and Court’s decisions affirming the well-known status of Prada’s “MIU MIU” trademarks. Consumers should be more familiar with “MIU MIU” than “NIUNIU衣櫥”. 

5.  In view of the similarity between the trademarks, the overlap of the designated products, and the well-known status and strong brand recognition of “MIU MIU”, the Committee found that TIPO was correct in cancelling “NIUNIU衣櫥”. As such, Ms. Lin’s appeal was rejected accordingly.

 

Source:

1.        TIPO’s decision: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjA8sXovu2Obze%2Fs2%2BIMVqqApPiNx%2B

2.    The Committee’s decision: https://pamsdmz.moea.gov.tw/pams-public/api/download/20250802_decisionDownload-A211403013_154509_557_MfVE5Y7m0z/

Nike prevailed in trademark opposition against “SNKRS LAB”

On June 27, 2025, Taiwan’s IP Office (“TIPO”) ruled in favor of Nike, cancelling the contested trademark that was confusingly similar to the sports giant’s famous trademark “SNKRS” (No. 01837088, see below).

The contested trademark, “SNKRS LAB” (No. 02330939, see below), was filed by Kaokuan International Trading Company (“Kaokuan”) on April 11, 2023, and granted on October 16, 2023, designated for use in goods in Class 1 (desiccant), 3 (detergents, foot deodorants, air fragrances, stain removers, etc.), 16 (paper towels, stickers, paper boxes, posters, photographs, publications, etc.), and 21 (shoe brushes, shoe stretchers, shoe horns, etc.). Nike filed an opposition on January 15, 2024, citing violations of Articles 30.1.10 and 30.1.11 of the Trademark Act.

TIPO sided with Nike on June 27, 2025, cancelling the contested trademark based on Article 30.1.11 of the Trademark Act.

1.        Article 30.1.11 of the Trademark Act provides that a mark shall not be registered if such a mark is identical or similar to another’s well-known trademark, hence there exists likelihood of confusion among the relevant consumers, or likelihood of harm to the reputation or dilution to the distinctiveness of the well-known trademark.

2.        According to the records, Nike’s “SNKRS” has established strong brand recognition in the relevant markets through the successful launch of Nike’s SNKRS APP, continuous media coverage, sales campaigns, and marketing events (such as SNKRS Day). TIPO therefore found that on the filing date of the contested trademark, Nike’s “SNKRS” had become well-known in the fields of apps, online shopping services for apparel, and sneakers.

3.        On similarity, TIPO found that although there were some decorative elements in the contested trademark, consumers would still perceive the mark as “SNKRS LAB”. Besides, “LAB” is the abbreviation of “laboratory” and is considered descriptive, so “SNKRS” constitutes the dominant element of the contested trademark. Accordingly, TIPO considered the contested trademark visually, verbally, and conceptually similar to NIKE’s “SNKRS”.

4.        “SNKRS” has no ordinary meaning, and TIPO noted that there were no other registrants, except for Kaokuan and Nike, who had registered “SNKRS” as their trademarks. Thus, “SNKRS” should be highly distinctive.

5.        Given that the well-known status of Nike’s “SNKRS”, TIPO posited that the consumers should be more familiar with Nike’s trademark, and that Kaokuan should have known of Nike’s “SNKRS” when filing the application of contested trademark. Hence, TIPO inferred that the application was not filed in good faith.

6.        Since the designated products of the contested trademark, such as desiccant, detergents, shoe horn, shoe brush, and deodorants, are complementary items that could be used or distributed in association with shoes and apparel, TIPO considered these products to be related to the designated products of NIKE’s “SNKRS”.

7.        Based on the above, given that “SNKRS” is distinctive and well-known, that there is similarity between the trademarks, that consumers are more familiar with Nike’s “SNKRS”, and that the designated goods are related, TIPO concluded that registration of the contested trademark would create confusion among consumers. The contested trademark was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOmBMYTrPtBmEfb1ELXco%2Bpc1TicPVd

Taiwan’s IP Office found “CHANTE’” confusingly similar to “CHANEL”

On June 25, 2025, Taiwan’s IP Office (“TIPO”) canceled the contested trademark “CHANTE’” in an opposition filed by Chanel, finding that the contested trademark is confusingly similar to Chanel’s well-known icon “CHANEL” (no. 01848463 and no. 01849570, see below).

The contested trademark, “CHANTE’” (no. 02369583, see below), was filed by Fei-Chang-Yi-Zhuo Limited (“FCYZ”) on June 21, 2023, and granted on April 16, 2024, designated for use in goods in Class 25, including suit, dress, pants, skirts, women’s clothing, underwear, swimwear, etc. Chanel filed opposition on July 11, 2024, alleging violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Chanel’s favor on June 25, 2025 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 or similar to another’s registered trademark, is applied for use in identical or similar goods or services, and hence creates likelihood of confusion among the relevant consumers.

2.        TIPO found “CHANTE’” and “CHANEL” are visually and structurally similar, as both start with “CH” and contain six characters. The difference between the last two letters (“TE” v.s. “EL”) was minor. While FCYZ argued that “CHANTE’” is French, and should be distinguishable in pronunciation and meaning, TIPO disagreed, noting that French is not a commonly understood by consumers in Taiwan, who are unlikely to perceive the term “CHANTE’” as a French word.

3.        On the designated products, TIPO found “CHANEL” was designated for use in clothing and footwear, which are similar or complimentary in nature to the apparel items listed under “CHANTE’”. As such, TIPO considered the designated products of “CHANTE’” overlap with those of “CHANEL.”

4.        On the strength of trademark, TIPO acknowledged the substantial evidence submitted by Chanel to demonstrate its fame, including the media coverage, sales data, and prior official findings recognizing the well-known status of “CHANEL”. To the contrary, the supporting materials provided by FCYZ were either not undated or failed to show the actual use of “CHANTE’”. TIPO therefore concluded that consumers should be more familiar with “CHANEL”.

5.        In view of the above, given that there is similarity between the trademarks, the overlap of the designated products, the well-known status of “CHANEL”, and Chanel’s strong brand recognition, TIPO held the registration of the contested trademark would likely create confusion among the relevant consumers. Hence, the contested trademark was canceled accordingly.

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOmBMwQrft9%2F97D7TgwoLk6HpqH3IPD

Dior prevailed in trademark dispute for its famous “J’ADORE” trademark

On June 11, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (the “Committee”) ruled in the favor of Dior, affirming the determination of Taiwan’s IP Office (“TIPO”) that the contested trademark shall be canceled due to likelihood of confusion with Dior’s famous “J’ADORE” trademark (no. 00832697, see below).

The contested trademark, “J’adore” (no. 01524570, see below), was filed on October 28, 2011, and granted on July 1, 2012, designated for use in goods in Class 9, including eyeglasses, components for eyeglasses, and optically corrective lenses. Dior filed invalidation on January 15, 2024, alleging violation of Article 30.1.11 of Trademark Act.

On December 27, 2024, TIPO sided with Dior. Although Dior’s “J’ADORE” covered fashion products like perfumes and fragrances, which were different from the eyeglasses products designated by the contested trademark, TIPO found eyeglasses are often used as fashionable and decorative accessories. As such, using a mark that is identical to Dior’s famous trademark, even though in different product category, may still create confusion. The registrant appealed, arguing that Dior’s evidence was insufficient to prove that its “J’ADORE” was famous prior to 2011, and that the designated products of the two trademarks were unrelated. 

The Committee rejected the registrant’s appeal based on the following:

1.        Based on the evidence submitted by Dior, aside from international marketing and sales records, there were sufficient local materials backing the well-known status of “J’ADORE”. For example, coverage in Taiwanese newspapers, Dior’s own webpage, presence in popular department stores like SOGO, Taipei 101, Far Eastern, Shin Kong Mitsukoshi, etc., and the records of online news reports from 1999 to 2011, all showed that when the contested trademark was filed in 2011, Dior’s “J’ADORE” had been famous in the field of perfumes and fragrances. TIPO’s finding was well supported by the submitted evidence.

2.        As to the difference in designated product categories, the Committee found that TIPO was correct in finding relatedness between the products covered by the two trademarks. In fact, it is quite common for eyeglasses to be marketed as fashion items, which could pair with other accessories to enhance one’s personal appearance. To this extent, the products covered by the contested trademark are related to Dior’s perfumes and fragrance, which were used to improve personal appeal. 

3.        Further, “J’ADORE” is not a common word. Registrant’s choice of using exactly the same word as trademark in a related product category could not be reasonably explained as a mere coincidence. The Committee therefore considers the filing of the contested trademark was based on bad faith.

In view of the high degree of similarity, the well-known status of “J’ADORE”, the relatedness of the designated products, and the bad faith in filing the contested trademark, the Committee upheld TIPO’s decision to cancel the contested trademark. 

Source: 

The Committee’s decision:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250713_decisionDownload-A411401026_102743_871_8drbTKdXlR/

TIPO’s decision:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNWI%2BOrAcoQofvg68kjaChqTE4zSKn8QOKZ

Schwan-Stablio’s attempt to cancel Swarovski’s swan trademark fell short

On June 11, 2025, the Taiwan’s Petitions and Appeals Committee of Ministry of Economic Affairs (“Committee”) rejected an appeal filed by Schwan-Stablio, affirming that Taiwan’s IP Office (“TIPO”) was correct in finding that Swarovski’s contested trademark would not cause confusion with the German brand’s iconic swan logo (no. 00851896, the ‘896 mark, see below).

Swarovski’s contested trademark, no. 02226817 (see below), was filed on December 1, 2020, and granted on June 1, 2022. It covered wide range of products in Class 3, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28; and services in Class 35, 41, and 43. Schwan-Stablio filed opposition on September 1, 2022, alleging that Swarovski’s registration for Class 16, which included notebooks, catalogues, book marks, greeting cards, diaries, etc., would cause confusion with the cited ‘896 mark. 

TIPO sided with Swarovski on January 17, 2025, finding that while the ‘896 mark has been well-known in the field of stationery products, the consumers would not confuse the contested trademark with the ‘896 mark. There is no violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. Schwan-Stablio appealed. 

Before the Committee, Schwan-Stablio particularly argued that when viewed as a whole, both trademarks formed visual impression of a swan, differing only in minor aspects such as head orientation and wing style. Besides, in other jurisdictions, such as EU, Turkey, and Egypt, there have been findings of similarity. Further, Schwan-Stablio argued bad faith, noting that its swan logo has been famous for years before Swarovski’s contested trademark was filed. Schwan-Stablio urged the Committee to overturn TIPO’s determination.

The Committee did not rule in the favor of Schwan-Stablio, reasoning that:

1.        Image of has been commonly used and registered as trademark in Taiwan. In fact, in Class 16, there were other registered trademarks featuring similar logos. Hence, consumers in Taiwan are familiar with such imagery, and should be able to distinguish different swan designs While both trademarks feature swans, this alone does not necessarily create likelihood of confusion. 

2.        Additionally, upon further review, there indeed are sufficient differences. For example, the contested trademark featured a swan poised to flight, while the ‘896 mark depicted a swan gliding smoothly on water. There are also other differences, such as the design and shape of the wings, the posture and position of the swans, and the contour and style of their heads. TIPO was therefore justified to find low similarity between the contested trademark and the ‘896 mark.

3.        Assessment of trademark confusion in its nature is territorial and local, which may vary depending on the actual use, consumers’ perception, trade practice, and legal standard. As a result, foreign decisions are not binding on TIPO or the Committee. 

4.        Moreover, records showed that Swarovski had long used swan logo for its jewelry products, and the contested trademark was part of its rebranding initiative in 2021. Without more concrete evidence showing free riding or deceptive intent, Schwan-Sablio’s allegation of bad faith was unfounded. 

To conclude, although Schwan-Stablio’s swan icon is well-known, the designated products are related, and both trademarks feature swans, the Committee found no likelihood of confusion, and affirmed that TIPO’s determination was correct based on the low similarity, the lack of evidence showing bad faith, and the distinctiveness of Swarovski’s contested trademark. 

 

Source: 

TIPO’s decision: 

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOiAskTpvusGijcp6OgcwGULUP6yaMj

The Committee’s decision:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20250706_decisionDownload-A211402028_175833_293_4CTPL0df5c/