On September 18, 2020, Taiwan’s IP Office (“TIPO”) found “ELECAFE” confusingly similar with HACHETTE FILIPACCHI PRESSE’s “ELLE”, and cancelled the opposed trademark accordingly.
The opposed trademark “ELECAFE”, was filed on January 15, 2018, designated for use in goods including tea bag, ice cream, cookies, candy, coffee, tea, and coffee bean. The opposed trademark was granted on April 1, 2019 (Reg. No. 01978815, see below). HACHETTE FILIPACCHI PRESSE (“HFP”) thereafter filed opposition on June 27, 2019.
TIPO found for HFP based
on the following reasons:
1. TIPO noted that the opposed trademark is
composed of “ELECAFE” and a drawing of cup of coffee with smoke. However, the
word “CAFÉ” is a common word that refers to restaurant or coffee shop, and the image
of cup of coffee also creates the impression of small café. Thus, TIPO was of
the view that upon seeing the opposed trademark, consumer’s focus would be its
initial “ELE”, rather than “CAFE” and the drawing of the cup of coffee. Since
“ELE” is the main portion of the opposed trademark, and the appearance and
pronunciation of “ELE” are similar with HFP’s registered “ELLE“, ordinary
consumers may view the opposed trademark similar with HFP’s “ELLE”. Hence, TIPO
found there is medium degree of similarity between the opposed trademark and
HFP’s “ELLE” trademark.
2. HFP’s asserted trademark “ELLE” was applied for
use in services such as steakhouse, restaurant, bar, coffee shop, and hotel,
while the opposed trademark was applied for goods such as coffee, tea, tea bag,
bread, cake, ice cream, etc. TIPO noted that goods designated by “ELECAFE” are
food or drink that are commonly served when providing the service designated by
HFP’s “ELLE” trademark. Therefore, TIPO determined that from the viewpoint of
consumers, the goods designated by “ELECAFE” is associated with the service
designated by HFP’s trademark.
3. HFP’s “ELLE” is not a common word that is widely
used or recognized by ordinary consumers, and the meaning of “ELLE” has nothing
to do with the nature and function of the service designated by HFP. As such, “ELLE”
is highly distinctive.
4. When it comes to evidence of use, there is little evidence submitted by the registrant of the opposed trademark. To the contrary, TIPO found HFP submitted mass amount of records supporting its use and marketing of its “ELLE” trademark, including the publication of the worldwide famous “ELLE” magazine (since 1945); the issuance of the Chinese version of “ELLE” magazine in Taiwan (since 1991); the publications of “ELLE Wedding”, “ELLE Decoration”, and “ELLE Accessories” magazine series; the licensed use of ELLE on suitcase, child clothing, handbag, and backpack; and the use of “ELLE” on catering service in countries like Malaysia, Japan, and China. Thus, TIPO was convinced that HFP’s “ELLE” trademark is more well-known. The consumers are more familiar with HFP’s “ELLE.”
Based on the above reasons, TIPO found the opposed trademark “ELECAFE” similar with HFP’s “ELLE”, and may cause confusion among the relevant consumers. As a result, the opposed trademark was cancelled accordingly.
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