“AgRICOLA” is found similar with the Swiss brand “RICOLA”

RICOLA GROUP AG (“RICOLA”), the worldwide famous expert in herb specialties, prevailed in opposition proceeding against “AgRICOLA” in Taiwan’s IP Office (“IPO”).

On August 2, 2017, Yen-Tai International Ltd. (“Yen Tai”) filed trademark application for “AgRICOLA”, designated for use in goods under Class 3 (e.g., cream, shampoo, facial cleansing, conditioner, etc.), Class 5 (e.g., nutrition supplement, baby food, herb tea supplements, etc.), and Class 30 (e.g., coffee, tea, candy, cookie, chocolate, etc.). Yen-Tai’s application was granted on May 1, 2018 (Reg. No. 01913141, see below). RICOLA filed opposition on July 31, 2018, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Taiwan’s Trademark Act.

IPO, after considering arguments and evidence submitted by both sides, found against Yen-Tai based on the following reasons:

1.     Article 30.1.11 of Trademark Act provides that a trademark shall be cancelled if such mark is confusingly similar with other’s famous mark that may cause confusion among the relevant public.

2.     “RICOLA” is originated from the combination of initials “Richterich & Co. Laufen”. The brand “RICOLA”, together with its unique throat lozenge mixed with the natural flavor of 13-herb mixture, has been widely popular in numerous countries in the markets of Europe, Asia, and the America continents for more than 50 years. RICOLA’s cited registered trademarks, including Reg. No. 00085233, 00151331, 00338936, 01208716, 01242891, 01552774, and 01734864, were registered in Taiwan dated back in as early as 1976, and its product is available in multiple sales channels including SOGO, PXMART, Carrefour, Costco, etc. Thus, “RICOLA” as a brand used in throat lozenge has become a well-known trademark in Taiwan.

 

3.     Yen-Tai’s “AgRICOLA” includes the same word “RICOLA”, with minor variations of “A” and “g”. Since “RICOLA” constitutes the major portion of Yen-Tai’s “AgRICOLA” trademark, an ordinary consumer would still find “RICOLA” the most distinctive part and develops stronger impression. Thus, the degree of similarity between “AgRICOLA” and “RICOLA” shall be as least medium.

4.     “RICOLA” has no ordinary meaning and thus is a highly distinctive trademark. Plus, after its continuous use and worldwide marketing, “RICOLA” has become so famous that consumers are more familiar with “RICOLA”.

5.     In addition to throat lozenge, IPO found that “RICOLA” has also been registered in other products under Class 5 and Class 30, such as herb tea, medicated candy, tea, medicated candy for soothing sore throat and coughing, etc. Thus, the IPO also took into consideration that “RICOLA” is registered in diversified products and may be used in different goods.

6.     Yen-Tai argued that there are other registered “agricola” trademarks, and that “argicola” is ordinary word, so “AgRICOLA” is distinguishable from “RICOLA.” However, the IPO noted that by particularly inserting “g” between “A” and “RICOLA”, Yen-Tai actually made “RICOLA” more noticeable in its registered “AgRICOLA” trademark. As such, Yen-Tai’s arguments are not persuasive.

Based on the above, the IPO found that Yen-Tai’s “AgRICOLA” is similar with the well-known trademark “RICOLA,” and that since the two trademarks are registered in similar goods, it is likely that an ordinary consumer will be confused and mistakenly believe that the two marks represent the same source of goods or that they are associated trademarks. Therefore, “AgRICOLA” shall be cancelled accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UDc5UStsM3psc0hKTVYrSURuM1lOZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true