On May 29, 2025, Taiwan's Intellectual Property and Commercial Court (“IPC Court”) ruled in the favor of Apple Inc. (“Apple”), finding that Taiwan's IP Office (“TIPO”) was erroneous in rejecting Apple's trademark application for “SIDECAR”, and therefore ruled that TIPO shall instead grant Apple's application (113-Shin-Shang-Su-Zi No. 35).
1. Factual Background:
On November 21, 2019, Apple filed an application in TIPO to register the trademark “SIDECAR” (the disputed mark) for use in Class 9 goods. During the application process, although Apple further limited the designated goods to “computer software,” TIPO still rejected said application, finding that the disputed mark was confusingly similar to the “SIDECAR” trademark (Registration No. 01104140, hereinafter the ‘140 mark) registered by ALFRED DUNHILL LIMITED (“Dunhill”). Apple filed an administrative appeal but was again rejected, and subsequently brought a lawsuit before the IPC Court.
2. The IPC Court's View On Similarity of Products:
A key issue for determining whether there is a likelihood of confusion was whether the goods designated under the disputed mark were similar to those under the ‘140 mark.
Aside from “glasses and sunglasses”, TIPO noted that the ‘140 mark's designated goods also included “laptop carrying bags,” and argued that “laptop carrying bags” were related to “computer software,” which is the designated product for Apple's disputed mark. TIPO reasoned that both goods relate to computers and enhance the convenience of computer use. Moreover, consumers can find both software and laptop carrying bags in retail channels such as TK3C, indicating that they are sold through the same channels. Consequently, TIPO concluded that “computer software” and “laptop carrying bags” should be considered related and similar goods.
However, the IPC Court held that the determination of whether goods are similar should be based on factors such as function, materials, manufacturers, and trading practices. “Computer software” involves intangible instructions and data, while a laptop itself is tangible hardware. In this light, the IPC Court reasoned that “laptop carrying bags” are designed to facilitate transportation and provide protective functions such as shock absorption when carrying laptop computers. Their materials are typically leather, fabric, or plastic. In terms of function, purpose, and materials, computer software and laptop carrying bags differ significantly. In addition, there is no complementary relationship for consumers' usage between computer software and laptop carrying bags.
The IPC Court further noted that although both items may be sold together in stores for the convenience of consumers, such bundling does not imply a functional or complementary relationship between the products themselves. Thus, TIPO should not render a similar conclusion based on a finding that the products are related to each other because of availability in the same distribution channels.
Although the disputed mark and the ‘140 mark consist of the same wording, the IPC Court found that the designated goods are dissimilar, both marks have distinctiveness, Apple filed the application in good faith, and Dunhill primarily operates in the fashion, wallet, and bag industries. Therefore, the IPC Court concluded that registration of Apple's disputed mark would not cause confusion with Dunhill's ‘140 mark, and accordingly reversed TIPO's prior decision.
3. Takeaway
This ruling clarifies that when assessing whether trademarks are designated for use in similar goods, courts must carefully analyze whether the goods' functions are complementary. Mere bundling or co-sale driven by consumers' convenience does not necessarily mean there is relatedness or similarity between the different products. The decision thus contributes to a more comprehensive framework for determining product similarity in trademark practice.