2025年8月24日 星期日

VOLVO Prevailed in Trademark Opposition Against “VOLOCO” Trademark

On July 24, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of auto giant Volvo, finding the contested trademark “VOLOCO” should be cancelled due to a likelihood of confusion with Volvo’s iconic brand “VOLVO” (Reg. No. 00111931, see below).


The contested trademark, “VOLOCO” (Reg. No. 02405141, see below), was filed on March 15, 2024, and granted on October 1, 2024, designated for use in goods in Class 12, including automobiles, components of automobiles, motorcycles, and components of motorcycles. Volvo filed opposition on December 30, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.


TIPO sided with Volvo based on Article 30.1.10, reasoning that:

1.    On trademark similarity, the contested trademark “VOLOCO” and Volvo’s “VOLVO” both start with “VOL” and end with “O”, which makes the two trademarks visually and verbally similar to each other.

2.    On the designated products, TIPO noted that Volvo’s “VOLVO” also covered “automobiles, motorcycles, trucks, and the relevant components”, which resemble those designated by the contested trademark.

3.    Further, based on TIPO’s and Court’s prior decisions, and the evidence of continuous media coverage, including the webpages introducing Volvo’s vehicles throughout the period of 2010 and 2024, “VOLVO” as a trademark was highly distinctive and has established strong brand recognition in the auto industry. Therefore, consumers should be more familiar with “VOLVO”.

4.    In view of the above, given the similarity between the two trademarks, the overlap of product categories, and “VOLVO”’s high distinctiveness and strong brand recognition, TIPO concluded that the registration of “VOLOVO” would create confusion with “VOLVO” among the relevant consumers. Hence, registration of “VOLOCO” was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOnAs4XrPujCqRo2xVknAPqty39JR8F

2025年8月17日 星期日

Apple successfully cancelled “APP LEMAN” trademark in opposition proceeding

On July 31, 2025, Taiwan’s IP Office (“TIPO”) cancelled the registered trademark “APP LEMAN”, finding such trademark to be confusingly similar to Apple Inc.’s iconic brand “APPLE” (Reg No. 01457997, 01591959, and 01438475, see below).

The contested trademark, “APP LEMAN” (Reg. No. 02348755, see below) was filed on May 25, 2023, and granted on January 1, 2024, covering services in Class 35, including advertising, online advertising, retail and wholesale of computer accessories, online auctions, consumer analysis for commercial and market purposes, retail and wholesale of computer hardware, retail and wholesale of computer software, etc. Apple Inc. filed opposition on March 28, 2024, citing violations of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO sided with Apple Inc. on July 31, 2025, cancelling “APP LEMAN” based on 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 or similar to another’s well-known trademark, and hence there exists likelihood of confusion, or damage of distinctiveness or reputation of such well-known trademark.”

2.        Based on the evidence submitted by Apple Inc., including the worldwide trademark registrations of “APPLE”, prior court’s decisions, TIPO’s decisions, catalogues of products, annual reports, and the relevant media coverages such as Forbes, Interbrand, and Fortune, TIPO agreed that “APPLE” has become well-known among the relevant consumers when the contested trademark filed for registration in 2023.

3.        The registrant argued that the contested trademark was based on a combination of “APP”, an ordinary word, and “LEMAN” a word without ordinary meaning. However, TIPO noted that the evidence of trademark use indicated that the registrant actually presented the contested trademark as “APPLE MAN”, instead of “APP LEMAN”. Thus, TIPO held that ordinary consumers may easily perceive the contested trademark as a combination of “APPLE” and “MAN”, which is similar to Apple Inc.’s well-known trademark.

4.        Further, “Apple” as a trademark is highly distinctive, and has established strong recognition among the relevant consumers. Besides, TIPO noted that the services covered by the contested trademark, such as the online advertising, and retail and wholesale of computer hardwares and accessories, are relevant to the designated products of Apple Inc.’s above well-known trademark. Therefore, TIPO concluded that there is relatedness between the designated services of the contested trademark and the designated products of Apple Inc.’s trademark.

5.        In light of the above, considering the well-known status of “APPLE”, the similarity between the two trademarks, the strong brand recognition of “APPLE”, and the relatedness between the designated products and services, TIPO held that the registration of “APP LEMAN” may create confusion among the relevant consumers. As a result, “APP LEMAN” was cancelled accordingly.

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOnBMscrfsUYODJJvM0wYQ295638WRL

2025年8月9日 星期六

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/

2025年8月2日 星期六

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/

2025年7月27日 星期日

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

2025年7月19日 星期六

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

2025年7月13日 星期日

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

The Petitions and Appeals Committee affirmed TIPO’s denial of trademark application featuring chrysanthemum crest

On October 16, 2025, the Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (“Committee”) found the flower design in a...