On August 6, 2018, ZHONG TIAN ZHENG HE XING CO., LTD. (“Zhong Tian”) filed trademark application for “Oriental Allure”, designated for use in cosmetics, herbal extracts for beauty, facial masks, facial cleansers, eye creams, cleansers for the body, lip gloss, lotions, body creams, skin care products, make-up removers, cleansing lotions, moisturizer, hair care products, sunscreen lotion, and shampoo. Zhong Tian’s application was granted on February 16, 2019 (Reg. No. 01969648, see below)
Chanel filed opposition against Zhong Tian’s aforesaid trademark on May 16, 2019, contending Zhong Tian’s aforesaid trademark would cause confusion with Chanel’s “Allure” trademarks (Reg. No. 00846557 & 00625777, see below).
1.
Article
30.1.10 of Trademark Act provides that a mark should not be registered if such a
mark is similar with a senior mark which is applied for use in identical or
similar goods or service so that there exists a likelihood of confusion among the
relevant public.
2.
Here,
TIPO noted that “allure” means “temptation or enticement”. Such a word, when
being used in goods such as cosmetics and body soap, is highly distinctive because it has no direct or
indirect connection with the nature or function of the designated goods. Besides,
based on the records, Chanel is the owner of most of the registered “Allure”
trademarks in Taiwan. In view of such distinctiveness and uniqueness, consumers are likely to be confused even when there is only minor degree of similarity. Although Zhong Tian argued that there are other registrants
that also obtain trademark registrations for “Allure”, the number is low and those
trademarks are not applied for use in cosmetic goods. TIPO found Zhong Tian's arguments insufficient
to prove “Allure” has been widely used in the relevant businesses and is not
distinctive.
3.
As
to similarity, TIPO noted that Zhong Tian’s opposed trademark is composed of a
drawing and stylized words “Oriental Allure”. The word “Oriental” is adjective, and is used to describe the nature of the word “Allure.” Thus, TIPO determined that “Allure” is the main and
distinctive portion of Zhong Tian’s opposed trademark, and that the opposed trademark,
when viewed as whole, is similar with Chanel’s registered “Allure” trademark. While
Zhong Tian argued its trademark has its own design ideology, such background is
irrelevant because similarity is determined based on the viewpoint of ordinary
consumers, not on the underlying design ideology.
4.
Zhong
Tian’s opposed trademark is applied for use in cosmetics and cleansing products
like facial cleansers, eye creams, body lotions, body creams, make-up removers,
and Shampoo. TIPO found functions of these goods highly similar with those designated by Chanel’s
“Allure” trademark.
5. Although both Zhong Tian and Chanel submitted considerable amount of evidence of trademark use to prove the corresponding fame of their trademarks, TIPO found records provided by Zhong Tian less persuasive because the documents it submitted, including news reports of its sponsored events, failed to show Zhong Tian’s use of the opposed trademark. Some documents did not show the use of "Oriental Allure", while the others were not properly dated. To the contrary, TIPO found evidence submitted by Chanel, including records of trademark registrations, advertising and marketing materials (including promotions on Vogue, BAZAAR, and GQ Men’s Uno), and other TIPO’s prior determinations, sufficiently demonstrated Chanel’s continuous and consistent use of “Allure”. Thus, TIPO rejected Zhong Tian's arguments that its “Oriental Allure” has already become famous among the relevant public and thus would not be confused with Chanel’s “Allure”.
In light of the similarity with Chanel’s “Allure” trademark, the similarity with the goods in which Chanel’s “Allure“ was applied for use, the high distinctiveness and recognizability of Chanel’s “Allure”, and the fact that the relevant consumers are more familiar with Chanel’s “Allure” at the time when Zhong Tian filed its application for “Oriental Allure”, TIPO ruled in Chanel’s favor, and cancelled the opposed trademark accordingly.
沒有留言:
張貼留言