Court Overturns IPO’s Decision on Trademark “SIDECAR” – Analysis of Criteria for Determining Similarity of Goods (APPLE INC. and ALFRED DUNHILL LIMITED)
Date: 17 October 2025
【Volume 159】
The determination of “identical or similar goods or services” has been an essential prerequisite for assessing the likelihood of confusion under the Trademark Act, and it is also a central issue in trademark examination and litigation practice.
In practice, the Taiwan Intellectual Property and Commercial Court (hereinafter “IP Court”) does not rigidly adhere to the descriptions provided by the International Classification (The Nice Classification) or to the formal class headings when determining “similar goods,” but instead returns to the realities of market transactions, taking into account of the function, purpose, materials, manufacturers, distribution channels, and consumer perception of goods integrally. For example, in a case involving automobiles and automobile lubricants, the IP Court pointed out that, though they are listed under Class 12 and Class 4 respectively, the two products overlap in terms of their sales channels and target consumers, and thus should be considered as similar goods. Likewise, in a case involving batteries and firefighting equipment, the court observed that even though the two serve different purposes, their fields of application intersect. Therefore, if the two bear identical or similar marks, consumers may be misled into believing that they originate from the same source—accordingly, they too are considered as similar goods (IP Court 2015 Xing Shang Su Zi Nos. 10 and 30 Administrative Judgments). These cases illustrate that the IP Court’s determination focuses not merely on the statutory classification boundaries, but rather on transaction realities, trading customs, and market perception.
In a recent trademark application involving “SIDECAR”, the IP Court overturns the Taiwan Intellectual Property Office (hereinafter “IPO”)’s decision on whether “computer software” and “carry bag for portable computer” should be deemed as similar goods. The IP Court highlights that whether different goods are similar should be determined based on trading customs, market realities, and consumer perception as a whole, instead of merely following IPO’s classification or formal requirements (the IP Court 2024 Xing Shang Su Zi No. 65 Administrative Judgment).
Case Fact
Well-known leading technology company Apple Inc. applied at the end of 2018 to register the mark “SIDECAR” under Class 9 and later restricted the designated goods to retain only “computer software.” This software enables an iPad to serve as an extended screen for a Mac, enhancing efficiency and user experience.
However, the IPO determined that this mark was identical to the trademark “SIDECAR” already registered by the renowned British luxury brand Dunhill for “carry bag for portable computer” also under Class 9, and that the goods constituted similarity as they were related in a certain degree. The IPO therefore rejected Apple’s application. Apple appealed, but it was dismissed. The company then brought the case to administrative litigation. Ultimately, the IP Court revoked the IPO’s decision and approved Apple’s “SIDECAR” trademark registration.
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Contested Mark |
Cited Mark |
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Trademark Holder |
APPLE INC. |
ALFRED DUNHILL LIMITED |
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Trademark |
Application No. 108076513 |
Registration No. 01104140 |
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Designated Goods |
Computer software |
Eyeglasses, sunglasses; eyeglass cases and spectacle frames for eyeglasses and sunglasses; carry bag for portable computer. |
Source: Taiwan Intellectual Property Office Trademark Search System
Legal Issue
The central legal issue of the case is whether the designated goods of the two marks are similar, such that there exists a likelihood of confusion among consumers.
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APPLE SIDECAR |
Dunhill SIDECAR Series |
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Images source: https://www.ebay.com/itm/286765707106 , APPLE official website
IPO’s Opinion
The IPO argued that although “computer software” and “carry bag for portable computer” differ in nature and function, both are related to computer products. In the market, it is common for companies to offer both types of goods simultaneously—companies not only sell computer hardware but also preinstall software while providing laptop bags for consumers to purchase. Retail channels also frequently sell both items on the same platforms.
Given this overlap in manufacturers, distribution channels, and target consumers, the IPO reasoned that if identical marks were born on these two goods, there would be a likelihood of confusion, as relevant consumers might mistakenly believe the goods originated from the same or affiliated sources.
IP Court’s Opinion
The IP Court adopted a stricter standard for determining similarity of goods. It emphasized that “similar goods” are those that share or are related in terms of function, materials, manufacturers, trading practices, or market conditions, such that if they bear an identical or similar mark , relevant consumers may misidentify the source of the goods, believing the goods are related, under general conception. “The Classification of Goods and Services” of the IPO serves merely as a reference; a comprehensive assessment on whether the goods are similar must still be made based on general conception and actual market circumstances, with various factors taken into consideration (with reference to the Supreme Administrative Court 2016 Pan Zi No. 42 Judgment).
The IP Court held as follows:
1. Nature and Function of Goods: “Computer software” refers to the intangible data installed in a computer with the main function of enhancing electronic device performance, which is entirely different from the purpose of “carry bag for portable computer” as physical and portable accessories. The two are neither complementary nor interdependent in function and nature, and consumers do not naturally expect to purchase them together at the same sales location.
2. Consumer Perception and Trading Practices: Apple software can only be obtained through its official platforms or come bundled with its computer products, while the cited trademark constitutes the line name under the luxury brand Dunhill, with relevant goods sold through exclusive fashion accessory channels. Even if some other brands in the industry bundle such goods for customers’ convenience, this is only a trading custom, not a necessary connection inherent in the nature of these goods.
3. Applicant’s Good Faith: The court further indicated that Apple had deleted part of the designated goods that conflicted with the prior mark during the application process and retained only “computer software.” This showed that the company had no intention to free ride on the other brand in bad faith and had filed the application bona fide based on business considerations.
In sum, the court held that the goods differ significantly in aspects of manufacturers, distribution channels, and target consumers. Therefore, they should not be considered as similar goods. Even if the trademarks consist of identical texts, there is no likelihood of confusion among relevant consumers.
Wisdom Analysis
According to Article 19 of the Taiwan Trademark Act and the IPO’s “Examination Guidelines on Likelihood of Confusion,” whether goods or services are “similar” must be determined by reference to actual trading circumstances and consumer perception.
In this case, the IP Court rejected the IPO’s arguments based solely on the visual and functional differences between the goods, emphasizing instead their potential complementarity and usage scenarios in the market. The court’s emphasis further reflects the judicial practice’s shift toward “substantive judgment” in trademark examination.
The case serves as a reminder for trademark applicants and rights holders that, when planning trademark portfolios or handling disputes, one should anticipate that the court will place greater emphasis on examining “the nature of goods” and “general consumer conception,” rather than merely relying on arbitrary sales models in the market.
Below provides our strategic suggestions for filing a trademark application:
1. Trademark Portfolio Planning:
Enterprises should avoid limiting the scope of protection solely by reference to “The Classification of Goods and Services” of the IPO when filing a trademark application. Instead, they should consider potential future product extensions and market complementarity and proactively include protection for related goods or services. For instance, software developers may also consider covering hardware peripherals, accessories, or cloud services, thereby reducing the risk of future disputes.
2. Litigation Strategy and Key Arguments:
In infringement or dispute proceedings, a party arguing for non-similarity of goods should emphasize and present concrete evidence of consumer perception, transaction practices, and distinctions in sales channels, to underscore differences in product attributes, functions, and market positioning, thereby supporting the argument of that there is “no likelihood of confusion.” Conversely, a party arguing for similarity should focus on their complementarity, intersections of usage scenarios, and overlapping marketing strategies.
Additionally, in this case, Apple’s deletion of certain designated goods, leaving only “computer software,” illustrates that proper narrowing of the scope of application can help avoid direct conflicts with existing marks. The IP Court specifically noted that Apple’s narrowing of the designated goods reflected its intention of good-faith intent rather than an attempt at bad-faith free-riding. For companies, this demonstrates a pragmatic approach that balances protection with higher chances of successful registration.
