Louis Vuitton scored a win in its trademark opposition against “LVYI & LY”

On December 29, 2023, Taiwan’s IP Office (“TIPO”) found in favor of French fashion giant LOUIS VUITTON MALLETIER (“LVM”), determining that the registration of “LVYI & LY” should be canceled for consumers may confuse such trademark with LVM’s iconic brand “LV” (no. 02285154 and no. 01790186, see below).

 

The contested trademark, “LVYI & LY” (no. 02303255, see below) was filed on August 1, 2022, and granted on June 16, 2023, designated for use in various goods and services under class 3 (hair conditioner, shampoo, human body cleanser, cosmetics, haircare products, etc.) and class 44 (hair dressing, beauty, skincare, barbering, hair salons, etc.). LVM filed opposition on September 5, 2023, citing violations of Article 30.1.10 and 30.1.11 of Trademark Act.

 

TIPO finds in favor of LVM, reasoning that:

 

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.    While there are additional English and Chinese letters presented in the contested trademark, it is clear that LVM’s “LV” and the contested trademark’s “LY” would constitute the dominant portion of the two trademarks, which consumers may find them visually similar with each other. In its entirety, “LVYI & LY” also demonstrate two overlapping English letters, which is similar with the style adopted by LVM’s “LV”. Thus, TIPO considers “LVYI & LY” similar with “LV”.

3.    TIPO also notes that LVM’s “LV” is designated for use in similar and related beauty and care products and services like hair lotion, hair spray, nail care, cosmetics, blush, lip pencil, eyeliner, eyelash, etc. These products and services are related to the purpose and function of products and services to which “LVYI & LY” is designated.

4.    TIPO further notes that in comparison to LVM’s voluminous evidence of use, the registrant of “LVYI & LY” provides no supporting materials to prove the distinctiveness and reputation of “LVYI & LY”. As such, based on the records at hand, TIPO concludes that consumers are more familiar with LVM’s “LV”, and that at the time of filing of “LVYI & LY”, LVM’s “LV” has been known among the relevant public.

 

In view of the similarity between “LV” and “LVYI & LY”, the similarity between the designated products and services, the distinctiveness of “LV”, and consumer’s familiarity with LVM’s “LV”, TIPO concludes that the registration of “LVYI & LY” may cause confusion with LVM’s “LV” among the relevant public. The registration of “LVYI & LY” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VzZvL0l6dUJxWVBUT2hFamhCNjkzQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Linkedin’s attempt to cancel Inline’s trademark “in” fell short

On April 15, 2022, social media giant Linkedin Corporation (“Linkedin”) filed trademark opposition against Inline Apps Limited (“Inline”), alleging registration of Inline’s trademark “in” should be canceled in view of likelihood of confusion with Linkedin’s famous trademark “IN” (no. 01478014, see below).

 

The contested trademark, “in” (no. 02197934, see below), was filed by Inline on June 22, 2021, and granted on January 16, 2022, designated for use in services under class 45, including private purchasing services, astrology services, wedding arrangement services, fashion trend information, etc. Linkedin argued that Inline’s “in” violated Article 30.1.11 of Trademark Act, because Inline’s trademark may cause confusion with Linkedin’s famous icon.

On December 11, 2023, Taiwan’s IP Office (“TIPO”) found for Inline, reasoning 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, 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. To be eligible for citing Article 30.1.11, the alleged trademark must be a well-known trademark.

2.    In this case, TIPO found the submitted evidence for trademark use insufficient to support the alleged well-known status of “IN”. Although Linkedin provided internet materials showing introduction of its service, records of online seminars, news coverages in magazines, and blog posts. However, TIPO found these materials either did not show use of “IN” or were produced after the filing date of Inline’s contested trademark. Among those supporting materials that did show use of Linkedin’s “IN”, TIPO found the volume and duration of use not enough to support a finding of well-known status. TIPO noted that there are around 2.5 million registered Linkedin users in Taiwan, but was unable to find any further information that could demonstrate how the trademark “IN” is being used and recognized among the users. As such, TIPO could not find Linkedin’s “IN” a well-known trademark.

3.    TIPO agreed with Linkedin that both trademarks, namely, Linkedin’s “IN” and Inline “in”, are similar with each other, and that both are distinctive for the designated goods and services. However, TIPO noted that Inline’s “in” is used in services that are quite different from those designated by Linkedin’s “IN”. Inline’s “in” is applied for use in services like purchasing and wedding arrangement services, but Linkedin’s “IN” is used primarily in social media services. TIPO also noted that there is no evidence suggesting Linkedin’s expansion of use of “IN” in other products or services.

4.      In view of the above, since there is insufficient evidence proving the well-known status of Linkedin’s “IN”, and no relevance between services designated by Linkedin’s “IN” and Inline’s “in”, TIPO found mere similarity between the two trademarks not enough to cause confusion among the relevant public. Besides, there is no evidence showing reputation or distinctiveness of Linkedin’s “IN” would be damaged due to the use of Inline’s “in” for providing the designated services. Hence, TIPO found no violation of Article 30.1.11 and sided with Inline accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUNDZHk1cmQ3aUN0dWtKVHFuSFVQUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Apple successfully asserted trademark right for its iconic “SIRI” in opposition proceeding

On December 14, 2023, Taiwan’s IP Office (“TIPO”) sided with Apple Inc. in its trademark opposition against trademark no. 02205180, finding the contested trademark should be canceled in view of likelihood of diluting Apple’s iconic voice assistant, “SIRI”.

The contested trademark, “SIRI” (no. 02205180, see below), was filed by Shi-Rei Limited (“Shi-Rei”) on July 9, 2021, and granted on March 1, 2022, designated for use in goods under class 3, including cosmetics, soap, lotion, skin care products, etc. Apple Inc. filed opposition on May 31, 2022, alleging possibility of dilution and confusion with its logo used for its famous voice assistant “SIRI”.

 

TIPO entered its determination on December 14, 2023, finding the contested 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 “identical with or similar to other’s well-known trademark, and hence there exists likelihood of confusion among the relevant public, or likelihood of dilution of distinctiveness or reputation of such well-known trademark.”

2.     TIPO notes that Apple Inc. started to use “SIRI” in its “iPhone 4S” in 2011, and such voice assistant has since been widely adopted and integrated in a variety of Apple Inc.’s popular products, including iPhone, iPad, Apple TV, HomePod, Apple Watch, AirPod, and Apple TV. Through the continuously commercial success and marketing of these devices, consumers in Taiwan should be very familiar with “SIRI”. As such, TIPO affirms that “SIRI” as a trademark is already well-known among the relevant public prior to the filing date of the contested trademark.

3.     As to similarity, TIPO notes that Shi-Rei’s contested trademark features the same English letters “S”, “I”, “R”, and “I” against a black backdrop. Consumers would find Shi-Rei’s contested trademark conceptually, verbally, and visually similar with Apple Inc.’s “SIRI” trademark. 

4.     As to distinctiveness, TIPO is aware that “SIRI” as a trademark is very unique and has not been widely used by others. Added to that, through ongoing marketing and successful promoting, Apple Inc.’s “SIRI” has become very famous and possesses high degree of distinctiveness among the public. In other words, consumers have established strong and unique connection between Apple Inc.’s voice assistant and its logo “SIRI”. 

5.     While Shi-Rei’s “SIRI” is designated for use in cosmetics and skin care products, which are quite different from Apple Inc.’s voice assistant software, TIPO opines that such registration may dilute the uniqueness and distinctiveness of Apple Inc.’s “SIRI” among the public. 

 

Based on dilution theory, TIPO determines that Shi-Rei’s “SIRI” should be canceled accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UUE2YlZ1ZktMYTRQa3lsaTJEcDZ6QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Apple Inc. prevailed in trademark opposition against “Artpple”

On November 30, 2023, Taiwan’s IP Office (“TIPO”) found trademark “Artpple” confusingly similar with Apple Inc.’s iconic trademark “APPLE” (no. 01591959 and no. 01457997, see below), and thus canceled the trademark “Artpple” accordingly.

 

The contested trademark, “Artpple” (no. 02099376, see below), was filed by Millock Limited (“Millock”) on March 31, 2020, and granted on November 1, 2020, designated for use in goods under class 18 (purse, handbag, wallet, suitcase, etc.) and class 25 (footwear, shoes, socks, shirts, jackets, etc.), and services under class 35 (online-shopping, advertising, maintenance of computer database, etc.). Apple Inc. filed opposition on February 1, 2021, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Apple Inc. on November 30, 2023, finding registration of “Artpple” 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 “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.    Here, TIPO affirms that Apple Inc.’s registered trademarks “APPLE”, after years of its successful sales and marketing in Taiwan, have become well-known. Such finding is also supported by TIPO’s prior determinations in opposition involving the trademark “APPLE”. Hence, TIPO holds that when Millock filed application for “Artpple” on March 31, 2020, “APPLE” is already well-known among the relevant public.

3.    As to similarity, TIPO notes that while “Artpple” has two additional letters “r” and “t”, such difference does not affect the visual similarity between “Artpple” and “APPLE”. Besides, the sequence and number of syllable of “Artpple” and “APPLE” are also similar with each other. In light of the visual and verbal similarities, TIPO opines “Artpple” resembles “APPLE” .

4.    TIPO further notes that Apple Inc. not only uses “APPLE” in electronic products like computer, but also diversifies and expands the brand to various kinds of goods and services, like clothing, wallets, and retails services. It is reasonable for ordinary consumers to expect Apple Inc. to develop products and services that are similar with those designated by “Artpple”.

5.    Furthermore, in comparison with evidence of trademark use submitted by Apple Inc., there is little evidence that could back the use of “Artpple” in Taiwan. As a result, TIPO finds consumers are more familiar with “APPLE” than “Artpple”.

6.    Given that “APPLE” is famous on the filing date of “Artpple”, that “Artpple” is visually and verbally similar with “APPLE”, that consumers are more familiar with “APPLE” and that Apple Inc. has expanded its “APPLE” brand to products and services that are related to those designated by “Artpple”, TIPO concludes that it is likely for consumers to confuse “Artpple” with “APPLE”. Hence, registration of “Artpple” is canceled per Article 30.1.11 of Trademark Act accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dFdZWmNlMVhHNW96dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

Cosmetics Giant “NIVEA” prevailed in trademark opposition over “NEAUVIA”

On October 31, 2023, BEIERSDORF AG (“BEIERSDORF”), the trademark registrant of “NIVEA” (no. 01790601, 01521516, 01316235, 00384064, and 00039212, see below), successfully challenged and canceled registration of trademark “NEAUVIA”, a mark registered by Swiss company MATEX LAB SWITZERLAND SA (“MATEX”), in trademark opposition proceeding.

The contested trademark, “NEAUVIA” (no .02177831, see below), was filed by MATEX on November 10, 2020, and granted on October 16, 2021, designated for use in services under class 44, including medical treatment, beauty and skin care services, plastic surgery, beauty consultant, etc. BEIERSDORF filed opposition against MATEX’s “NEAUVIA” on January 17, 2022, citing violation of Article 30.1.10, 30.1.11 and 30.1.12 of Trademark Act.

 

Taiwan’s IP Office (“TIPO”) sided with BEIERSDORF, reasoning 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.      To begin with, TIPO finds that based on the successful sales of products and continuous use of “NIVEA” trademark throughout the past 50 years in Taiwan, BEIERSDORF has shown that at the time of MATEX’s filing of “NEAUVIA”, BEIERSDORF’s “NIVEA” has become well-known in the product field of cosmetics and sunscreen.

3.      TIPO further notes that both “NIVEA” and “NEAUVIA” demonstrate similar sequence of “N”, “V”, and “A”, that both trademarks start with “N” and end with “A”, and that the pronunciation of “NIVEA” is similar with that of “NEAUVIA”. Thus, there is medium degree of similarity between “NIVEA” and “NEAUVIA”.

4.      “NEAUVIA” is designated for use in medical service, in which NIVEA’s well-known products like skincare and beauty may be used or adopted. As such, consumers with ordinary degree of care will consider the designated services of “NEAUVIA” are related to products designated by BEIERSDORF’s “NIVEA”.

5.      Given that BEIERSDORF’s “NIVEA” is distinctive and well-known, that consumers are more familiar with BEIERSDORF’s “NIVEA”, that there is medium degree of similarity between “NIVEA” and “NEAUVIA”, and that “NEAUVIA” is designated for use in services that are related to NIVEA’s well-known cosmetics and beauty products, TIPO considers there is likelihood that consumers may be confused due to similarity between “NIVEA” and “NEAUVIA”. Thus, the registration of “NEAUVIA” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MXVKcmdoeW4vZ0sxd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

German lighting brand OSRAM successful in trademark opposition against Etron’s “USRAM” trademark

On October 4, 2023, Taiwan’s IP Office (“TIPO”) canceled trademark “USRAM” in view of similarity with OSRAM GMBH’s (“OG”) well-known trademark “OSRAM” (no. 01270503 and 01172285, see below).

 

The contested trademark, “USRAM” (no. 02227904, see below), was filed by Etron Technology Inc. (“Etron”) on December 8, 2021, and granted on June 16, 2022, designated for use in goods under class 9, including computer, random access memory, face recognition device, microchip, portable flash memory, wafer, semiconductor device, integrated circuit board, microcircuit, etc. OG filed opposition on August 30, 2022, alleging that registration of Etron’s “USRAM” violates Article 30.1.10 and 30.1.11 of Trademark Act.

 

In its determination rendered on October 4, 2023, TIPO sided with OG, finding registration of “USRAM” violates at least 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 “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.    On the status of well-known trademark, TIPO finds in OG’s favor in view of the brand’s long history, its continuous sale and marketing in Taiwan, and TIPO’s prior determination made in 2014 finding “OSRAM” a famous trademark among the relevant consumers. Based on the profound and continuous use of “OSRAM”, TIPO affirms that at the time Etron filed its application for “USRAM”, OG’s “OSRAM” is a well-known trademark among the relevant consumers in Taiwan.

3.    In terms of similarity, TIPO posits that Etron’s “USRAM” is similar with OG’s “OSRAM” for both trademarks end with the same English letters “SRAM”. The difference created by the initial letters (“U” v. “O”) is minor, because the shape of “U” is somewhat similar with “O”. As such, TIPO considers Etron’s “USRAM” visually and orally similar with OG’s “OSRAM”.

4.    Further, TIPO finds OG’s “OSRAM” more famous and distinctive among the relevant public, as “OSRAM” as a lighting brand has been registered and used as trademark since as early as 1962 in Taiwan. To the contrary, there is no evidence of trademark use submitted by Etron to support its distinctiveness and recognizability. Thus, TIPO concludes that consumers are more familiar with OG’s “OSRAM” than Etron’s “USRAM”.

5.    In view of the above, given that Etron’s “USRAM” is similar with OG’s “OSRAM”, that OG’s “OSRAM” is more distinctive and well-known among the relevant public, and that OG has expanded its brand territory from lighting solution to optical semiconductor products, TIPO determines that registration of Etron’s “USRAM” may cause confusion with OG’s famous trademark “OSRAM.” Hence, Etron’s “USRAM” is canceled accordingly.

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WTFpWkt5Nmt4NnV0WDhEN3c1TVpUZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“LV” prevails in trademark opposition against “LY”

In its determination rendered on September 28, 2023, Taiwan’s IP Office (“TIPO”) sided with fashion giant LOUIS VUITTON MALLETIER (“LOUIS VUITTON”), finding registration of trademark “LY” should be canceled due to its similarity with LOUIS VUITTON’s famous trademark “LV”.

 

According to 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.

 

Based on the evidence submitted by LOUIS VUITTON, including the marketing materials, media exposures, news reports, and prior court decisions, TIPO affirmed that LOUIS VUITTON’s trademark “LV” (No. 01922370, see below) has obtained the status of well-known trademark in the field of perfume, watches, bags, accessories, jewelry, etc.

 

On similarity, TIPO noted that the contested trademark “LY” (no. 02222609, see below) demonstrates similar pattern as LOUIS VUITTON’s trademark “LV”. Both feature one English letter at the top and another English letter at the bottom, with overlapping portion in the middle. Additionally, both trademarks have the same letter “L”, and the “Y” in “LY” is somehow visually similar with the “V” in “LV”. TIPO hence considered both trademarks visually similar with each other.

 

Further, TIPO noted that “LY” is designated for use in services like online shopping, department store, TV shopping, retail and wholesale services for cosmetics, etc. These services are related to the products in which LOUIS VUITTON’s “LV” is used.

 

Given that LOUIS VUITTON’s “LV” has become well-known and is highly distinctive, that the contested trademark “LY” is similar with “LV”, and that “LY” is applied for use in services that are related to the products in which “LV” is used, TIPO concludes that registration of “LY” may raise confusion among consumers with LOUIS VUITTON’s famous trademark “LV”. As such, the contested trademark “LY” is canceled accordingly.    

 

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Qi9sa0tDbTc5Q2RTekNCSG5BcTdKZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true