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