Regular readers of our articles will know that we like to discuss trade mark cases from around the world and that many of the cases we report on are what would be referred to as'confusingly similar trade mark cases'. In this article, we discuss two trade mark cases recently heard in Taiwan.
Case 1: Lacoste v Full Moon
Full Moon
In Thailand, there is a brewing company called Full Moon Brewworks Co. Ltd ("Full Moon") that has a registration for the trade mark CHA LAN WAN Pale Ale Logo in Taiwan in class 32 for a range of beers and non-alcoholic drinks. A representation of the trade mark appears below:
* Image credit unknown
Lacoste
On 1 April 2024, Lacoste applied to cancel the registration for CHA LAN WAN Pale Ale on the basis of confusing similarity with its crocodile logo, see below:
Ruling
On 2 May 2025, the Taiwan IP Office ("TIPO") ruled on the matter. Here are some of the main points that TIPO made:
Crocodiles are pretty common
Both trade marks contain crocodile imagery, but crocodiles are old hat, and CHA LAN WAN means crocodile. TIPO ruled that the similarity between the two trade marks is low, and that consumers will be able to distinguish the trade marks.
TIPO mentioned that the CHA LAN WAN trade mark features a somewhat bizarre image of a woman in a short skirt being embraced by a mean-looking crocodile.
Lacoste provided limited evidence
TIPO accepted that Lacoste's trade marks are distinctive and used on numerous other goods, but this evidence was limited and did not justify a finding that there would be a 'natural brand extension' into beer and other drinks. TIPO made the point that Full Moon's trade mark is also distinctive.
Lacoste has a limited reputation
TIPO found that, although the Lacoste trade marks had once been regarded as well known (in 2009 and 2016) in the field of clothing and accessories, that evidence was now outdated and, although Lacoste claimed that it had made continuous use of its trade marks, TIPO said that there was no evidence to support this.
The result is that the reputation of Lacoste's trade marks is limited and confined to the clothing sector.
The application for cancellation had to fail
The application for cancellation failed. TIPO provided a number of reasons:
- Lacoste's reputation is limited to clothing
- The degree of similarity between the trade marks is low.
- Both trade marks are distinctive
- There is nothing to suggest that Lacoste plans to enter the beer market.
- Consumer confusion is unlikely
- There is no risk of dilution or tarnishment
Rather emphatic!
Case 2 - more confusing similarity, NIUNIU and MIU MIU
I'll end with a short one.
The issue in this case was whether the trade marks NIUNIU and MIU MIU (belonging to Prada) would be confused.
The case started out at TIPO, and it went up from there to Taiwan's Petitions and Appeal Committee. On 14 May 2025, the higher office ruled that the registration for trade mark NIUNIU should be cancelled on the basis of confusing similarity with the trade mark MIU MIU, and the real likelihood of consumers being misled. The court made a number of findings:
- Similarities in the trade marks: The trade marks NIUNIU and MIU MIU are similar, both visually and phonetically
- Similarities in the goods: The product areas overlap in both apparel and accessories
- Recognition: It has not been proved that NIUNIU has acquired any goodwill or repute
- Well-known trade mark: It was accepted that MIU MIU was already well-known when the application to register the trade mark for NIUNIU was filed
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