On November 1, 2019, CHANEL filed opposition against “NANACOCO PROFESSIONAL”, a trademark filed by ANNIE International Inc. (“ANNIE”), alleging that the registration of “NANACOCO PROFESSIONAL” would cause confusion with CHANEL’s famous “COCO” trademarks.
The contested trademark, “NANACOCO
PROFESSIONAL”, was filed on September 19, 2018, and granted on August 1, 2019 (Reg.
No. 02000421, see below), designated for use in goods under class 3, including various
kinds of cosmetics, and other relevant products like toner, make-up remover, facial
cleaner, etc.
CHANEL contended that ANNIE’s “NANACOCO
PROFESSIONAL” is similar with its trademarks like “COCO” and “COCO MADEMOISELLE”
(Reg. No. 00102776, 00438289, 01781763, and 01667227, see below), and is
applied for use in similar cosmetics and personal hygiene products. Thus, “NANACOCO
PROFESSIONAL” should be cancelled.
TIPO sided with CHANEL on March 22, 2021, finding registration of ANNIE’s “NANACOCO PROFESSIONAL” violated Article 30.1.10 of Trademark Act:
1.
Article 30.1.10 of Trademark
Act provides that a mark shall not be registered if: 1) such a mark is
identical with or similar to another person’s registered trademark or earlier
filed trademark, and 2) 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 3) hence there exists a likelihood of
confusion on relevant consumers.
2.
Here, TIPO notes that since “PROFESSIONAL”
is ordinary word that means expert or specialist, it is descriptive and would
not constitute the distinctive part of ANNIE’s “NANACOCO PROFESSIONAL”. In
other words, ordinary consumers would view “NANACOCO” as the distinctive part
of the contested trademark. In this light, as “NANACOCO” contains the same word
“COCO” that is also used in CHANEL’s “COCO” and “COCO MADEMOISELLE”, ordinary
consumers may find them visually and conceptually similar with each other. However,
the degree of similarity is moderate.
3.
As for the designated goods,
TIPO finds ANNIE’s “NANACOCO PROFESSIONAL” is applied for use in numerous cosmetics
under class 3, which are highly similar with those designated by CHANEL’s “COCO”
(for use in perfume, shower gel, and shampoo) and “COCO MADEMOISELLE” (for use
in cosmetics, makeup, etc.). Thus, ANNIE’s “NANACOCO PROFESSIONAL” is applied
for use in similar products that are designated by CHANEL’s “COCO” and “COCO
MADEMOISELLE”.
4.
When it comes to the strength
of the trademark, TIPO finds this factor also tilted to CHANEL’s favor, because
CHANEL submitted voluminous records showing that by the filing date of ANNIE’s “NANACOCO
PROFESSIONAL”, the cited “COCO” and “COCO MADEMOISELLE” trademarks have been
famous and well known by the consumers in the relevant cosmetic and fragrance
products. Although ANNIE also submitted evidence such as webpage and sales
records in support of its trademark use, TIPO finds the cited website less
helpful because the website is not operated in Taiwan and has no date of use.
Besides, the records also showed that the alleged sale of products was not proceeded
in Taiwan. Thus, based on the evidence of trademark use, TIPO determines that
consumers are more familiar with CHANEL’s “COCO” and “COCO MADEMOISELLE”.
In view of the above, since there is
moderate degree of similarity between ANNIE’s “NANACOCO PROFESSIONAL” and
CHANEL’s “COCO” and “COCO MADEMOISELLE”, the designated goods of these trademarks
are highly similar, and consumers are more familiar with CHANEL’s “COCO” and “COCO
MADEMOISELLE”, TIPO determines that the registration of ANNIE’s “NANACOCO
PROFESSIONAL” might cause confusion among the relevant consumers. Hence, ANNIE’s
trademark “NANACOCO PROFESSIONAL” was cancelled by TIPO based on Article
30.1.10 of Trademark Act.
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