Taiwan’s IP Office: Accor’s Hotel Brand “Novotel” Is A Well-Known Trademark

On July 30, 2018, a Mr. Liang filed application for trademark “NOVOTEL” for use in goods such as handbag, purse, briefcase, belt, etc. Mr. Liang’s application was granted on March 16, 2019 (Reg. No. 01975799, shown below). Accor filed opposition on June 14, 2019, and Taiwan’s IP Office (“IPO”) found for Accor.

Accor alleged that Mr. Liang’s trademark shall be cancelled due to violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. More specifically, Accor stated that its registered trademarks for its Novotel Hotel, including the word mark “Novotel” (Reg. No. 00162720, shown below), are famous trademarks after years of service and marketing in Taiwan, and that Mr. Liang’s attempt to register a highly similar word mark is out of bad faith.

IPO found for Accor, determining that Mr. Liang’s trademark should be cancelled due to being identical with Accor’s famous trademark, and will cause confusion in the relevant public.

1.      Article 30.1.11 of Trademark Act provides that a trademark shall not be registered if being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

2.      With regard to Accor’s registered word mark “Novotel”, IPO noted that there is sufficient evidence, including continuous news reports, advertisements, magazines, and awards, supporting the finding of the well-known status of Accor’s “Novotel” trademark.

3.      After confirming Novotel as a famous trademark, the IPO went on to find that Mr. Liang’s opposed trademark is identical with Accor’s famous trademark. The similarity is too high that ordinary consumers may mistakenly believe that the two marks represent the same source of service or goods.

4.      Accor’s registered “Novotel” is unique and highly distinctive. According to the records, the IPO found that other than Mr. Liang and Accor, there is no one else registering the same word mark.

5.      Although Mr. Liang’s opposed trademark is used for goods such as purse, handbag, belt, leather goods, etc., the IPO was aware of Accor’s highly diversified business. For example, in its Novotel Hotel, Accor also provides fashionable goods like leather products for its customers. Thus, the goods designated by Mr. Liang’s opposed trademark may be considered relevant to the service provided under Accor’s Novotel trademark.

In view of the fact that Accor’s Novotel is a well-known trademark, that Mr. Liang’s trademark is highly similar with Accor’s trademark, and that there is likelihood of confusion caused by the similarity between the two trademarks, IPO sided with Accor and determined that Mr. Liang’s trademark shall be cancelled in accordance with Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bmUrRzgrMjliVGZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true