Swiss Apparel Company CONSITEX Successful In Cancelling Trademark That Features A Single Character “Z”

CONSITEX S.A. (“CONSITEX”), the famous Swiss apparel company that holds registered trademarks for “Z Ermenegildo Zegna” (Reg. No. 01162771), and “Z Zegna” (Reg. No. 01345481 and 01724735) in Taiwan, filed opposition against another registered trademark that features a single stylized “Z” (Reg. No. 01895119, hereafter “the opposed trademark”) before the Taiwan’s IP Office (“TIPO”) on April 30, 2018. On June 16, 2020, TIPO ruled in favor of CONSITEX, concluding that the opposed trademark shall be cancelled due to likelihood of confusion caused by its similarity with CONSITEX’s trademark.

The opposed trademark was filed on July 31, 2017, designated for use in goods under Class 18, including, among the others, wallets, leather bags, backpacks, school bags, waist bags, suitcases, handbags, shopping bags, briefcases, hiking bags, camping bags, key cases, cosmetic bags, travel bags, lunch bags, cosmetic cases, umbrellas, and trekking poles. 

TIPO sided with CONSITEX based on the following reasons:

1. Similarity

TIPO noted that both the opposed trademark and CONSITEX’s trademarks demonstrated character “Z”. In particular, TIPO found the opposed trademark “Z” similar with CONSITEX’s “Z Ermenegildo Zegna”, with the former featuring a stylized “Z” embedded in a pentagonal block, and the latter displaying a “Z” in gray as backdrop. An ordinary consumer would find the character “Z” in both trademarks the most impressive and appealing portions. Therefore, based on the comparison of overall visual appearance, perception, and pronunciation, CONSITEX’s “Z Ermenegildo Zegna” is found similar with the opposed trademark.

2. The designated goods 

As to the designated goods, CONSITEX’s cited trademarks are also applied for use in Class 18, covering goods such as backpacks, handbags, briefcases, suitcases, purses, wallets, key cases, briefcases, suitcases and travel bags, leather belts, umbrellas, cosmetic bags, shopping bags, etc. In comparison to the goods the opposed trademark is designated, TIPO opined that they share common or similar customer base, provide similar functions, and are supplied through similar or overlapping distribution network. Thus, the goods which the two trademarks are applied for are also similar.

3. The strength of CONSITEX's trademarks

CONSITEX’s “Z Ermenegildo Zegna” and “Z Zegna” are combinations of a single character “Z” and characters of “Ermenegildo Zegna” and “Zegna”, with no reference to the nature and function of their designated goods. Thus, CONSITEX’s “Z Ermenegildo Zegna” and “Z Zegna” are very distinctive and will be recognized as symbols that identify the source of products or services.

4. Other factors

TIPO further considered the supporting evidence submitted by CONSITEX, including records of its worldwide use of “Ermenegildo Zegna”, “EZ”, “Zegna”, “Z Zegna”, and “Z logo” across more than 50 countries with over 550 stores, as well as the opening of its flagship store in Taiwan’s most famous 101 Tower in 2012. Based on the voluminous trademark use evidence, TIPO determined that CONSITEX’s “Z Ermenegildo Zegna” and “Z Zegna” should already be well known trademarks for apparel products and the relevant accessories (such as purses) before the filing date of the opposed trademark. Hence, the relevant consumers shall be more familiar with CONSITEX’s “Z Ermenegildo Zegna” and “Z Zegna”. Furthermore, records show that in as early as 2015, CONSITEX already used highly similar image, i.e., stylized Z embedded in pentagonal block, in one of CONSITEX’s stores in Milan, Italy. Thus, it is likely that the applicant, who is also in the apparel business, knew of such use and then filed the opposed trademark with intent to imitate CONSITEX’s brand.

In view of the similarity of trademarks, the similarity of the designated goods, the high distinctiveness and global reputation of CONSITEX’s “Z Ermenegildo Zegna” and “Z Zegna”, and the lack of good faith, the opposed trademark “Z” is found similar with CONSITEX’s trademark and thus is likely to cause confusion among the general public. TIPO concluded that the opposed trademark shall be cancelled accordingly.

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UUwwOVBTUndCOTZZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Court found “foreal” not similar with the famous trademark “L’OREAL”

Lewei Nano Tech. Co. Ltd. (“Lewei”) filed application for its trademark “foreal & stylized characters of pure nano declaration” on July 28, 2017, designated for use in goods including “germicide; germicide for environmental sanitation; disinfection for environmental sanitation agent; fungicide for environmental sanitation; disinfectant for sanitation; drug for animals; wound dressings for animals; detergents for animals; disinfectants for animals; for animals bactericide; fish medicine; veterinary disinfectant; veterinary medicine; veterinary medicine; pigeon medicine; deodorant for clothes; deodorant for non-human body and animals; deodorant for clothes agent; deodorant for textiles; and antibacterial hand sanitizer.” Lewei’s application was granted on February 21, 2018 (Reg. No. 1894506, see below).

L’OREAL, S.A. (“L’OREAL”) filed opposition against Lewei’s aforesaid trademark on April 27, 2018, arguing Lewei’s trademark would cause confusion with L’OREAL’s registered word mark “L’OREAL” (see below) and its other trademarks presenting combination of “L’OREAL” and other Chinese characters (for example, Reg. No. 00388772, 01055435, 01055436, and 01284773, see below). L’OREAL requested that Lewei’s trademark shall be cancelled based on Articles 30.1.10, 30.1.11, and 30.1.12.

 

 

Taiwan’s IP Office (TIPO) denied L’OREAL’s request, finding no violation of Trademark Act. L’OREAL challenged TIPO’s determination to the Appeal Board, but the Appeal Board sided with TIPO. As such, L’OREAL further filed a complaint with Taiwan’s IP Court (“TIPC”), asking the court to vacate the determinations of TIPO and Appeal Board, and to rule that Lewei’s contested trademark shall be cancelled.

On June 18, 2020, TIPC rejected all L’OREAL’s claims and affirmed TIPO’s determination. The main reasons held by TIPC are as follows:

1.      The cited articles of Trademark Act:

A.      Article 30.1.10 of Trademark Act provides that “A trademark shall not be registered if it is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

B.      Article 30.1.11 of Trademark Act provides that “A trademark shall not be registered if it is 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 well-known trademark or mark.”

C.      Article 30.1.12 of Trademark Act provides that “A trademark shall not be registered if it is identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.”

2.      With regard to Article 30.1.10 of Trademark Act:

A.      The degree of similarity is quite low:

Both Lewei’s trademark and L’OREAL’s trademarks demonstrate the same characters “oreal”, but the initial characters are different, where Lewei’s opposed trademark begins with “f--” while L’OREAL’s trademarks begin with “L”. In addition, L’OREAL is a French word, and its pronunciation in French is obviously different from that of Lewei’s “foreal” in English. Furthermore, the meaning of Lewei’s “foreal” in English is “for real”, which echo its statement “pure nano declaration”. The perception, pronunciation, and visual appearance of Lewei’s opposed trademark are all different from those of L’OREAL’s.

B.      Most of the designated goods of the opposed trademark are dissimilar with those of L’OREAL’s:

TIPC closely reviewed the designated goods, and found that except for antibacterial hand sanitizer, all the other goods designated by Lewei’s opposed trademark concern drug or dosage for animal or environmental use, which are distinguishable from L’OREAL’s. Thus, the designated goods of the opposed trademark are different from those of L’OREAL’s trademarks.

C.      L’OREAL’s trademarks are more famous, but Lewei’s opposed trademark is registered out of good faith, and there is no actual confusion

TIPC agreed that L’OREAL’s trademarks are more famous, and that Lewei’s and L’OREAL’s goods are supplied through similar channels. However, there is no record showing actual confusion. Further, since Lewei’s opposed trademark is dissimilar and used in different kinds of goods, Lewei’s application probably was made out of good faith.

D.     In sum, although TIPC recognized that L’OREAL’s trademarks are more famous and the sales channels are overlapping, these factors are outweighed by the findings that Lewei’s trademark is not similar and is mainly used for dissimilar goods. Plus, there is no actual confusion, and Lewei’s application was made out of good faith. Hence, taking all the factors into consideration, TIPC concluded that Lewei’s trademark does not violate Article 30.1.10 of Trademark Act.

3.      With regard to Article 30.1.11 of Trademark Act

A.      L’OREAL’s trademarks are well-known, but there is no likelihood of confusion because Lewei’s opposed trademark is dissimilar and designated for use in different goods:

TIPC was aware of L’OREAL’s fame, but, as discussed above, the similarity between Lewei’s “foreal” and L’OREAL’s “L’OREAL” is so low that it is unlikely for the relevant consumers to be misled into believing that Lewei’s “foreal” is related to L’OREAL’s “L’OREAL”. Further, the designated goods are also dissimilar. Thus, TIPC found Lewei’s “foreal” not similar to L’OREAL’s well-known trademarks, and is not likely to cause confusion among the relevant public.

B.      L’OREAL could not raise trademark dilution because the records do not show the fame of L’OREAL’s trademarks have reached beyond the boundary of the designated goods and relevant consumers:

Although L’OREAL argued that allowing registration of “foreal” would dilute the distinctiveness of its famous “L’OREAL” trademarks, TIPC found this argument unpersuasive. TIPC explained that Article 30.1.11 actually contains two legal grounds. The first legal ground applies to situation where a trademark is “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”. The second applies to situation where a well-known trademark is so famous that not only the consumers relevant to the designated goods or service, but the general public, are all well aware of the fame of the asserted trademark, and hence there is “likelihood of dilution of the distinctiveness of the well-known trademark”. In other words, for one to apply trademark dilution theory, there must be evidence showing the fame of the asserted trademark is recognized and known by not only the consumers relevant to the designated goods or service, but also the general public. In this case, TIPC found the submitted evidence sufficient to prove “L’OREAL” is well-known among the relevant consumers within the field of beauty and makeup products, but insufficient to prove “L’OREAL” has become well-known to the general public. Besides, there is no other evidence indicating the existence of Lewei’s “foreal” has caused harm to L’OREAL’s reputation or fame. Hence, Article 30.1.11 is not applicable.

4.      With regard to Article 30.1.12 of Trademark Act

A.      The purpose of Article 30.1.12 of Trademark Act:

Turning to Article 30.1.12 of Trademark Act, the main purpose of this article is to deter free riders and to address the loophole under the first-to-file system. More specifically, this article applies to situation where the applicant knows of the existence of an earlier used trademark due to prior business relationship, and files similar trademark application with the intent to imitate the earlier used trademark.

 

B.      L’OREAL as a trademark is put in use prior to the filing of Lewei’s “foreal”, but Lewei’s trademark is not similar, and there is no prior relationship between Lewei and L’OREAL:

Here, it is undisputed that L’OREAL as a trademark has been put in use prior to the filing of Lewei’s opposed trademark, but Lewei’s trademark, as analyzed above, is not similar with L’OREAL’s trademarks. Besides, Lewei’s business focuses on nano technology, which is substantially different from L’OREAL’s business. There is no other evidence showing Lewei ever entered into any form of business relationship with L’OREAL before its filing of “foreal”. As a result, it is unlikely that Lewei filed the opposed trademark with intent to imitate the fame and reputation of L’OREAL’s famous trademarks. As such, Lewei’s opposed trademark does not violate Article 30.1.12 of Trademark Act.

Based on the forgoing reasons, TIPC sided with TIPO’s determination, and rejected L’OREAL’s claims.

Source:

https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c2%2c20200618%2c2

“adiader” is found similar with “adidas” by Taiwan’s IP Office

On June 20, 2020, Taiwan’s IP Office (TIPO) denied trademark application for “adiader”, finding such mark similar with the registered trademark “adidas”.

Per Article 30.1.10 of Taiwan’s Trademark Act, a trademark shall not be registered if such mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.”

In this case, a Mr. Wu, filed trademark application for “adiader” on December 13, 2019 (Application No. 108081998, see below), and designated for use in goods under Class 25, including, among other things, shoes, slippers, boots, sneaker, ski boots, baby shoes, etc.

TIPO found Mr. Wu’s application similar with the registered trademarks “adidas” held by ADIDAS AG (Reg. No. 00054345 and 00054342, see below), and should be rejected based on Article 30.1.10.

More specifically, TIPO reasoned that:

1.      The rejected trademark, “adiader”, shows similar sequence and structure of characters “adi-d-” as presented in the cited trademarks “adidas.” Besides, the first three characters of “adiader” are the same as those of the registered “adidas”. Although “adiader” ends with “er” while “adidas” ends with “s”, such difference is minor and ordinary consumers would still find the two marks similar with each other.

2.      The rejected trademark is applied for goods such as shoes, slippers, boots, sneaker, ski boots, and baby shoes. The cited trademarks, similarly, are applied for use in various kinds of shoes, boots, sport clothing, and training outfit. Thus, the rejected trademark and the cited trademarks are applied for use in similar goods, or, in goods that are often used together by ordinary consumers, or are sold in similar channels.

3.       As to distinctiveness, the cited trademarks “adidas” are highly distinctive because it is not related to the nature or function of its designated goods. In view of such high degree of distinctiveness, it is more likely for consumers to be misled when there exists certain degree of similarity.

4.      Although Mr. Wu argued that the spelling and pronunciation of “adiader” and “adidas” are different, TIPO found such arguments unpersuasive. As mentioned above, the overall appearances of “adiader” and “adidas” are similar, with only minor differences in the last two characters (i.e., “er” v. “as”). More importantly, when deciding whether to purchase, the consumers would not make detailed comparison between the two trademarks. Rather, the decision usually is based on consumer’s general impression. Thus, there still is likelihood that consumers will be confused and misled due to the similarity of these two trademarks and the goods for which these trademarks are applied.

In view of the above, TIPO denied Mr. Wu’s application for “adiader” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R0JlSUJiQmpnWG8wVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan's IP Office Sided With DC Comics' “WONDER WOMAN” In Trademark Opposition Proceeding Against “WONDER KiDS”

On June 16, 2020, Taiwan’s IP Office (TIPO) determined that “WONDER KiDS” is similar with “WONDER WOMAN” of DC Comics (“DC”), and thus shall be cancelled based on Article 30.1.10 of Trademark Act.

The cancelled trademark, “WONDER KiDS” (Reg. No. 01926900, see below), was filed by Vertex Sports Company (“Vertex Sports”) on February 2, 2018, and granted by TIPO on July 16, 2018, designated for goods such as toys, flying discs, sports equipment, baseballs, rackets, sports chest protectors, sports hand guards, dumbbells, stationary exercise bikes, swimming float, fishing equipment, etc.

DC filed opposition against Vertex Sports on October 15, 2018, arguing that “WONDER KiDS” may cause confusion with its famous “WONDER WOMAN” trademarks (Reg. No. 01852625, see below), designated for goods in, among the others, toy cars, fly discs, swimming float, baseball, basketball, and sports equipment.

TIPO sided with DC on June 16, 2020, ruling that “WONDER KiDS” shall be cancelled due to likelihood of confusion caused by its similarity with “WONDER WOMAN.” TIPO’s reasons are as follows:

1.    The cited trademark “WONDER WOMAN” and the main portion of the challenged trademark “WONDER KiDS” are both made up of two ordinary characters, with difference in that the former ends with “Woman”, while the latter ends with “kids”. Additionally, in day-to-day Chinese, “woman” and “kids“ are common words that sometimes are used together, so “woman“ and “kids” are associated with each other. Accordingly, there is medium degree of similarity between Vertex Sports’ “WONDER KiDS” and DC’s “WONDER WOMAN”.

2.    Both “WONDER KiDS” and “WONDER WOMAN” are used in similar goods, such as toy, sport gears, and swimming gears. These goods serve similar function and are usually sold through similar channels, with overlapping customers base. Thus, the two trademarks are used in similar goods.

3.    “WONDER WOMAN” has acquired considerable distinctiveness through the continuous marketing and promotion by DC, including the worldwide popular superhero movies “Batman v. Superman Dawn of Justice” and the blockbuster “Wonder Woman.” Besides, since the meaning of “WONDER WOMAN” has no relation with the nature and function of the designated goods, consumers would consider it distinctive and use it to identify the source of products.

4.    “WONDER WOMAN” as a trademark has been registered in multiple countries, including EU, Canada, Australia, China, Japan, and Brazil, and gained popularity in local market through marketing campaigns and diversified merchandising, such as licensed superhero figures, toys, apparels, etc. In comparison, the records of use submitted by Vertex Sports did not show sufficient media exposure, viewership, and long time of use. As such, TIPO found consumers would be more familiar with “WONDER WOMAN.”

5.    In addition to the similar characters “WONDER KiDS”, VERTEX SPORTS seemingly used a stylized “W” as the backdrop of its challenged trademark. Upon further examination, such stylized “W” demonstrated similar visual effect of a bird’s wings as DC demonstrated in its famous “W” icon for “WONDER WOMAN.” In view of the similarity between “WONDER WOMAN” and “WONDER KiDS”, and the adoption of similar stylized “W” characters, TIPO found VERTEX SPORTS did not file application out of good faith.

Based on the above, TIPO determined that VERTEX SPORTS’s “WONDER KiDS” is similar with DC’s “WONDER WOMAN”, and may cause confusion among the relevant consumers. Thus, the challenged “WONDER KiDS” shall be cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SW9JMHNmVll3SkVEVDh2YmlZR3N5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true