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
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