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