On February 3, 2020, Parfums Christian Dior S.A. (“Dior”) filed opposition against a trademark registered by a third party, alleging that registration of the contested trademark would cause confusion with Dior’s well-known “CD” trademark (e.g., Reg. No. 01719065, see below).
The contested trademark, which also features a stylized “CD” (Reg. No. 02018695, see below), was filed on March 27, 2019, and granted on November 1, 2019. The contested trademark is designated for use in goods under class 3, including cosmetics, perfumes, hair conditioner, incense, skin care, animal cleaning agent, cosmetics for animal, air fragrance, etc.
Taiwan’s IP Office (“TIPO”) sided with Dior on April 29, 2021, finding the contested trademark shall be cancelled based on Article 30.1.11 of Trademark Law:
1. Article 30.1.11 of Trademark Law provides that a mark shall not be registered if such mark is identical to or similar with another person’s well-known trademark, and hence there exists a likelihood of confusion on the relevant public.
2. With regard to the status of Dior’s “CD” trademark, TIPO confirms that before the filing date of the contested trademark, i.e., March 27, 2019, Dior’s cited trademark has become famous in products like cosmetics and perfume. TIPO’s finding is based on Dior’s worldwide registration records of its “CD” trademark, evidence showing Dior’s continuous use of “CD” trademark since 1952, and all the other records of marketing and media exposure in Taiwan starting from 2014.
3. The contested trademark features two stylized letters “C” and “D”, which are the same letters presented in Dior’s aforesaid famous trademark. Since the contested trademark is verbally and visually similar with Dior’s well-known “CD” trademark, TIPO opines the two trademarks are highly similar with each other, and the mere difference in font style is not enough for ordinary consumers to distinguish the contested trademark from Dior’s famous “CD” trademark.
4. As to the distinctiveness of Dior’s famous trademark, TIPO finds Dior’s trademark highly distinctive because “CD” has no bearing with the nature or function of the products that the trademark is designated for use. TIPO agrees that “CD” as a trademark, when being used in cosmetics like lipstick and pressed powder, demonstrates high distinctiveness among the relevant consumers.
5. Further, TIPO notes that Dior submitted relevant evidence showing its “CD” trademark has extended into beauty industry. For example, TIPO finds that in addition to cosmetics and perfume, Dior’s “CD” trademark has been put in use on other products like candles and cosmetic case. Moreover, TIPO’s aforesaid finding is further strengthened by the evidence showing that in the famous Taipei 101 Tower, Dior provides beauty and skin care service through its physical store. Therefore, TIPO believes that Dior’s cited “CD” trademark has been put in diversified use.
In view of the above, since the contested trademark is highly similar with Dior’s famous and distinctive “CD” trademark, is applied for use in cosmetic products that serve similar or associated purpose, and Dior has put its “CD” trademark in diversified use, TIPO agrees that there is likelihood that the registration of the contested trademark would cause confusion on the relevant consumers. As such, TIPO rules that the contested trademark should be cancelled.
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