In May 2026, the Taiwan Intellectual Property and Commercial Court (the IPC Court) rendered its judgment in Case No. 114 Xing-Shang-Su-Zi No. 30 concerning opposition to the ‘Zegna’ trademark. The IPC Court dismissed the administrative action brought by Consitex S.A., a Swiss company that owns the internationally renowned Italian luxury fashion brands Ermenegildo Zegna and Zegna, and upheld the decision of the Taiwan Intellectual Property Office (the IP Office) rejecting the opposition.
Given that the dispute involved a conflict between the internationally recognised luxury brand Zegna and industrial machinery products, the case provides valuable insight into the scope of cross-class protection afforded to well-known trademarks under Taiwan’s Trademark Act.
In this case, Wah Wo Holdings Limited, a Hong Kong company, applied to register the trademark ‘Zegna’ for use in Class 7 goods, including generators, road rollers, agricultural machinery, elevators, and lifts. Consitex S.A. argued that its trademarks for ‘Zegna’ and ‘Ermenegildo Zegna’ had acquired substantial reputation and recognition both globally and in Taiwan, and that registration of the opposed mark violated articles 30.1.10, 30.1.11, and 30.1.12 of the Trademark Act.
The IPC Court’s opinion
With respect to trademark similarity, the IPC Court found that the opposed mark ‘Zegna’ was highly similar to the plaintiff’s trademarks in which ‘Zegna’ constituted the dominant and distinctive element. In particular, the IPC Court noted that the opposed mark was virtually identical to the plaintiff's word mark ‘Zegna’. Although some of the plaintiff’s marks incorporated the term ‘Ermenegildo’ or additional elements, the IPC Court concluded that, when assessed in their entireties, the parties’ marks exhibited a medium to high degree of similarity.
The IPC Court also recognised the significant market reputation enjoyed by the plaintiff’s marks. The judgment found that, prior to the filing date of the challenged trademark on July 14 2022, the marks ‘Ermenegildo Zegna’, ‘Zegna’, and ‘Z Zegna’ had become widely known among relevant businesses and consumers in Taiwan in relation to apparel products and had acquired the status of well-known marks under the Trademark Act. This status was achieved through extensive promotion via long-standing sales activities, department store sales channels, media reporting, and social media marketing.
Nevertheless, the central issue ultimately turned on whether a sufficient commercial nexus existed between the parties’ respective goods to justify cross-class protection. The IPC Court noted that the plaintiff’s marks were primarily used in connection with luxury fashion products – including clothing, footwear, leather goods, fragrances, and eyewear – whereas the opposed mark was designated for industrial products such as generators, agricultural machinery, and engineering equipment. The court found significant differences between the respective goods in terms of nature, purpose, manufacturers, distribution channels, and target consumers, making it difficult to regard them as similar goods.
The plaintiff further argued that the Zegna brand had gradually expanded into adjacent sectors, including outdoor products and safety helmets, demonstrating a pattern of diversified business operations. However, the IPC Court held that these products largely arose from random collaborations with third-party brands and that no evidence had been presented showing that the plaintiff had entered the industrial machinery sector. Consequently, the IPC Court found insufficient grounds to conclude that the Zegna brand had extended into the field covered by Class 7 goods.
Accordingly, the IPC Court determined that consumers encountering the ‘Zegna’ mark on industrial machinery would not likely associate such products with the plaintiff’s luxury fashion business and therefore would not be confused as to source, sponsorship, or affiliation. Furthermore, while recognising that the plaintiff’s marks enjoy well-known status, the court considered that their level of fame was not so extraordinary as to bridge the substantial gap between luxury apparel and industrial machinery. The IPC Court therefore concluded that the registration of the opposed mark was unlikely to result in trademark dilution or to impair the distinctiveness or reputation of the plaintiff’s well-known marks.
Takeaways
Importantly, this decision should not be interpreted as signalling a restrictive approach towards the protection of well-known marks in Taiwan. Rather, it reaffirms Taiwan’s long-standing effort to strike a delicate balance between trademark rights and fair market competition. In recent years, both the IPC Court and IP Office have granted broader protection to internationally recognised brands in cases involving goods or services across different sectors, particularly where the fame of the mark, the strength of its distinctiveness, and the likelihood of consumer association justified an expanded scope of protection under anti-dilution principles.
Such expanded protection has typically been afforded to highly famous brands possessing strong source-identifying power and an established ability to transcend traditional product categories. Examples often include luxury brands, leading technology companies, and globally recognised consumer brands whose reputations naturally extend beyond their core lines of business.
Accordingly, the significance of the Zegna decision lies in the court’s fact-specific assessment of whether the evidence established a sufficient connection between the plaintiff’s brand and the dissimilar industrial machinery sector. For international brand owners, the judgment highlights the need to provide persuasive evidence of consumer recognition, brand diversification, business expansion into new sectors, or potential dilution when seeking trademark protection beyond their core product categories.
This decision further illustrates that, although protection afforded to well-known trademarks can be extensive, it is not boundless; its scope ultimately depends on actual market conditions and consumer perception.
