Taiwan’s IP Office found Chanel’s famous monogram distinguishable in trademark opposition

It has been well recognized in Taiwan that Chanel’s “CC” monogram (see below) is a well-known trademark in fashion goods such as leather products, perfume, boots, cosmetics, jewelry, and clothing. However, in a determination rendered by Taiwan’s IP Office (“TIPO”) on July 20, 2021, Chanel was not able to cancel a mark that allegedly used similar monogram in its trademark.

 

The contested trademark, “CHLIV” (Reg. No. 02030679, see below), was filed on April 29, 2019, and granted on December 16, 2019, designated for use in service under class 43, including coffee shop, mobile food stall, restaurant, hotel, burger shop, fast food truck, etc. The contested trademark was filed and owned by Chris Lin, the champion of the World Coffee Fest Latte Art 2016. According to Mr. Lin, "CHLIV" represents the luxury coffee brand he intends to develop in Taiwan. 

Chanel filed opposition on March 16, 2020, alleging that the monogram icon featured in the “CHLIV” trademark is confusingly similar with its famous “CC” monogram.

TIPO’s final determination did not side with Chanel based on the following reasons:

1.      While it is not disputed that Chanel’s “CC” monogram is famous and well-known among the relevant consumers in the field of fashion products at the time when the contested trademark was filed for application, TIPO finds the famous “CC” monogram is not similar with the contested trademark.

2.      More specifically, both trademarks feature combination of stylized circular curve, but the length of the arc lines is very different. TIPO also finds that in both trademarks the way and the pattern these arc lines overlap and connect with each other are also noticeably dissimilar. Moreover, the “CHLIV” presented in the challenged trademark makes it more dissimilar with Chanel’s “CC” monogram.

3.      Although Chanel’s “CC” monogram is highly distinctive and more well-recognized, there is evidence supporting the actual use of the challenged trademark. For example, there is photo showing the use of the challenged trademark in CAFÉ restaurant dated as early as August 31, 2019. Further, TIPO notes that there is no evidence showing actual confusion.

4.      Chanel argues that its business is diversified and its trademark has been used in other products, such as racket, surfing board, scooter, etc. However, TIPO finds the nature of these products are very different from the food and restaurant service designated by the challenged trademark. Therefore, TIPO determines that the relevant consumers should be able to distinguish the products and services represented by the two trademarks.

5.      Since the challenged trademark is dissimilar and not applied for use in similar goods or services, TIPO is convinced that the registration of the challenged trademark is based on good faith.

6.      Based on the aforesaid analysis, TIPO finds that while Chanel’s “CC” monogram is more famous and distinctive, such factors are balanced and neutralized by the findings that the challenged trademark is dissimilar, is designated for use in different kind of services, is registered out of good faith, and there is no evidence showing actual confusion. Hence, TIPO posits that there should be no confusion caused by the registration of the challenged trademark.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OUY2clNCaERqbXJLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Beer brand "CORONA" prevailed in trademark opposition against "CONAS"

 CERVECERIA MODELO DE MEXICO,S. DE R.L. DE C.V. (“CERVECERIA”), the registrant of “CORONA” trademarks (Reg. No. 01406009, 01406007, 01293268, and 01293266, see below) in Taiwan, filed opposition against CONA'S CO., LTD (“CONA”) on June 30, 2020, alleging that registration of CONA’s trademark shall be cancelled.

 

The contested trademark, “CONAS” (Reg. No. 02050781, see below), was filed on August 12, 2019, and granted on April 1, 2020. “CONAS” was applied for use in goods under class 32, including drinks such as soda water, beer, juice, mineral water, non-alcohol drinks, fruit vinegar drink, etc.

 On July 28, 2021, Taiwan’s IP Office (“TIPO”) ruled in CERVECERIA’s favor, finding registration of “CONAS” violates Article 30.1.10 of Trademark Law:

 

1.      Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark: 1) 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.      TIPO finds “CONAS” similar with CERVECERIA’s asserted “CORONA” trademarks, because both trademarks start with “CO” and, in general, end with “NA”, with minor difference of style and spelling. Besides, TIPO notes that the font of the contested trademark is also similar with that of CERVECERIA’s asserted “CORONA” trademarks. Accordingly, TIPO determines the contested trademark is visually and verbally similar with the asserted “CORONA” trademarks.

3.      As to the designated goods, TIPO opines that “CONAS” is also designated for use in beer, which is the same product designated by the asserted “CORONA” trademarks. Thus, TIPO finds the contested trademark is applied for use in the same products.

4.      TIPO further notes that while “CORONA” carries the meaning of “crown”, it is distinctive when being used for drink product. Meanwhile, there are sufficient records showing the asserted “CORONA” trademarks have been well-recognized among the relevant consumers through the promotion and marketing of the “CORONA” beverage products. However, TIPO finds there is little evidence showing the use of “CONAS” in its designated goods. Thus, TIPO concludes that consumers are more familiar with the asserted “CORONA” trademarks.

 

In view of the above, since “CONAS” is similar with “CORONA”, is designated for use in same kind of product, and there is no evidence of trademark use that could prove consumers are more familiar with “CONAS”, TIPO determines that registration of “CONAS” might cause confusion among the relevant public, and rules that the contested trademark shall be cancelled in view of Article 30.1.10 of Trademark Law.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YjhFeU0wZU1nMzYxd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office found no likelihood of confusion between Lenovo’s “YOGA” and E-Century’s “IOT PAD YOGA CONNECT”

On June 16, 2021, Taiwan’s IP Office (“TIPO”) denied Lenovo’s trademark opposition against the registered trademark “IOT PAD YOGA CONNECT”, finding Lenovo’s “YOGA” not similar with “IOT PAD YOGA CONNECT”, and there would be no confusion caused among the relevant public.

Lenovo’s trademark, “YOGA” (Reg. No. 01667590, see below), was filed on September 27, 2012 (priority date: March 30, 2012 ), and designated for use in goods under class 9, including computer, laptop, software, etc.

The challenged trademark, “IOT PAD YOGA CONNECT” (Reg. No. 02025626, see below), was filed by E-Century on January 19, 2019, and granted on December 1, 2019, also designated for use in goods under class 9, including computer hardware, software, mouse pad, internet equipment, mobile phone, touch panel, communication equipment, mobile power device, etc.

 Lenovo filed opposition on February 27, 2020, alleging the registration of the challenged trademark would violate Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law. However, TIPO did not side with Lenovo in its final determination.  

 

1.     TIPO finds the degree of similarity between “IOT PAD YOGA CONNECT” and “YOGA” is low. The only similarity between the two trademarks is the word “YOGA”. However, TIPO notes that “YOGA” is an ordinary word that has been used in other registered trademarks. Ordinary consumers are less likely to use “YOGA” alone to distinguish the source of the supplied goods or services. Additionally, the font size of “YOGA” presented in “IOT PAD YOGA CONNECT” is relatively small. As such, when being viewed in its entirety, the word “YOGA” in “IOT PAD YOGA CONNECT” would not be the main distinctive portion. Moreover, there are graphical drawings displayed in “IOT PAD YOGA CONNECT”, which makes the challenged trademark more distinguishable from Lenovo’s word mark “YOGA”. Therefore, the similarity between the two trademarks is low.

2.     As to the designated goods, TIPO opines that some of the designated goods, such as computer hardware, software, mouse pad, and internet equipment, indeed are similar or associated with those designated by Lenovo’s “YOGA”. However, TIPO notes, there are other products that are dissimilar and less relevant with the designated goods of Lenovo’s “YOGA”, such as mobile phone, mobile power device, etc.

3.     As to distinctiveness, TIPO affirms that both “YOGA” and “IOT PAD YOGA CONNECT” demonstrate certain degree of distinctiveness when being used in products under class 9.

4.     While it is undisputed that Lenovo’s “YOGA” has been registered as trademark in multiple jurisdictions around the globe, and that the relevant product lines, e.g., YOGA BOOK, have been very successful in terms of their sale and market share, TIPO finds these records insufficient to show “YOGA” has already become well-known when application for the challenged trademark was filed, because these documents either do not directly show the use of Lenovo’s trademark “YOGA”, or lack the corresponding date of use.

 

In view of the above, considering that the records are insufficient to show Lenovo’s “YOGA” has achieved well-known status, that the degree of similarity between the two trademarks is low, that both of them demonstrate certain degree of distinctiveness, and that they are not applied for use in exactly the same kind of products, TIPO finds the registration of “IOT PAD YOGA CONNECT” is not based on bad faith and would not cause confusion with Lenovo’s “YOGA” trademark. Hence, Lenovo’s opposition is denied accordingly.  

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YnpwWmYyOVl2cUJhWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true