ENS' IP team likes to monitor IP cases from around the world. Although we deal with all sorts of trade mark issues, we admit that it is confusingly similarity claims that get us up in the morning. In this article, we visit the IP-active island state of Taiwan, and discuss three confusing similarity cases.
SCHWAN STABILO v SWAROVSKI
The German company, Schwan-Stabilo, sought to cancel Swarovski's registration in Taiwan for a trade mark that comprises a swan device.
Taiwan's Petitions and Appeals Committee of Ministry of Economic Affairs (the Committee) was not persuaded. It made the rather significant point that, in an earlier case, Taiwan's IP Office (TIPO) had found that Swarovski's trade mark would not be confused with Schwan-Stabilo's 'iconic' swan device.
Swarovski has a Taiwanese registration that covers a wide range of goods – classes 3, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28, 35, 41 and 43. Schwan-Stabilo's attack on the Swarovski trade mark registration was seemingly limited to class 16 - covering notebooks, greeting cards and the like - and was based on a likelihood of confusion.
Here are the two birds – Schwan-Stabilo is on the left, Swarovksi on the right.
*Image credit: Taiwan IP Office
The findings
The Committee made these findings:
- The Schwan-Stabilo swan is well-known
- The designated products are related
- Both trade marks feature swans.
Which sounds very much like a slam-dunk. But...
Not so fast!
The Committee ruled that there was no likelihood of confusion, which was based on:
- low similarity
- no evidence of bad faith, and
- the distinctiveness of Swarovski's trademark.
Some discussion
Here are some of the points that were made by the Committee:
Old hat: Swan devices are nothing new. Consumers in Taiwan are familiar with swan imagery, and they can easily distinguish swan devices. A discerning lot apparently!
Differences: There are clear differences between the two trade marks. One swan looks agitated and ready to take flight. The other is well... chilling maybe. Other differences include the design and shape of wings, the posture and position of swans, and the contour and style of their heads. Overall, the degree of similarity is low.
A venerable old bird: Swarovski has long used the swan logo for jewelry, and the contested trade mark was part of its rebranding initiative in 2021. Without more concrete evidence showing free riding or deceptive intent, Schwan-Stabilo's allegation of bad faith was unfounded.
No confusion:The Committee summarised things as follows:
- Schwan-Stabilo's swan icon is well-known and the products are related, with both trade marks featuring swans
- However, there is no likelihood of confusion because of the low similarity, the lack of evidence showing bad faith, and the distinctiveness of Swarovski's contested trade mark.
NIKE – SWOOSH!
An opposition
In a further trade mark opposition in Taiwan, Nike opposed an application to register what you see below:
*Image credit: Taiwan IP Office
The opposition was, of course, based on the Nike swoosh, which most of our readers are likely to recognise.
Similarity
This was never going to be very difficult. TIPO made the following points:
- Ticks: Both the contested trade mark and Nike's trade marks feature tick-shaped symbols;
- Swoosh: The overall visual impression of the contested trade mark is similar to Nike's swoosh icons;
- Distinctive: Nike's swoosh design is 'inherently distinctive';
- Repute: Nike's trade marks have 'established strong recognition', they are 'well-known in connection with shoes, footwear, and apparel'.
NIVEA AND NEVA
On 28 May 2025, TIPO handed down a ruling in a case that involved the German skincare company Beiersdorf - the company had applied to cancel a registration for the trade mark NEVA, on the basis that it is confusingly similar to the German company's well-known trade mark NIVEA.
These were TIPO's findings:
- The trade mark NEVA is visually and phonetically similar to the trade mark NIVEA
- There is an overlap of goods in the two specifications
- The trade mark NIVEA is well-known
- As a result of NIVEA's repute, the registration of the trade mark NEVA could lead to consumer confusion.
The result is probably correct. But it's a pity that we can't end this article with the words, Never say Neva!
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