Taiwan’s IP Office found no confusion between “水頭家WATER BOSS” and “BOSS”

On September 30, 2021, Taiwan’s IP Office (“TIPO”) denied trademark opposition filed by HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO. KG (“HUGO”), finding registration of “水頭家WATER BOSS” would not cause confusion with HUGO’s famous “BOSS” and “HUGO BOSS” trademarks (see below).

 

In its opposition filed on May 14, 2020, HUGO argued that its “BOSS” and “HUGO BOSS” trademarks, such as No. 00174072, 00279546, 00414384, 00173436, 01552958, and 01965218, have become well-known in apparel, watches, glasses, perfume, and luxury products after years of its successful and continuous marketing and sales.

Such high degree of distinctiveness and fame might be confused or diluted by the registration of “水頭家WATER BOSS” (Reg. No. 02042268, see below), because, according to HUGO, the contested trademark also features the same word “BOSS”, and is applied for use in associated services under class 35, including agency service for import or export, advertising, retail service for beverage, rental service for vendor machine, etc.

However, TIPO does not side with HUGO:

1.     HUGO contends that registration of “水頭家WATER BOSS” would violate Article 30.1.11 of Trademark Act, which provides that: “A trademark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.” For Article 30.1.11 to be applicable, there must be similarity between the cited well-known trademark and the contested trademark.

2.     Here, although it is well established that HUGO’s cited trademarks, “BOSS” and “HUGO BOSS”, are well-known, TIPO finds the contested trademark “水頭家WATER BOSS” is dissimilar. While it is true that both trademarks contain the word “BOSS”, the contested trademark further present additional elements, including “water” and the Chinese characters “水頭家”, which denotes “boss of water”. As such, TIPO is of the view that the contested trademark is distinctive when being used for service under class 35 (e.g., agency service for import or export, advertising, etc.), and ordinary consumers would find “水頭家WATER BOSS”, in its entirety, different from HUGO’s famous trademarks.

3.     HUGO argues that when seeing the contested trademark, consumers would focus on the word “BOSS” only, because such word is already famous. TIPO disagrees. TIPO finds “水頭家WATER BOSS” as a whole distinctive, and thus consumers would view the contested trademark in its entirety, rather than particularly focus on the word “BOSS”.

4.     Based on the above reasons, since the similarity between the two trademarks is low, TIPO determines that it is less likely for consumers to confuse “水頭家WATER BOSS” with HUGO’s famous “BOSS” or “HUGO BOSS” trademarks. HUGO’s opposition is therefore denied.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MktqL1VsT3ovTk9QdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office rejected application for “Sup” in view of similarity with Chapter 4’s famous “Supreme” trademark

Chapter 4 Corp. (“Chapter 4”), the registrant of the famous “Supreme” trademark in Taiwan (See below), successfully prevented APIYOO Holding Co. Ltd. (“APIYOO”) from acquiring registration for its “Sup” trademark.

APIYOO’s application was filed on October 18, 2019 (See below), designated for use in goods under class 8, including electric razor, razor blade, nail trimming tools, iron, curler, etc. When APIYOO’s application was still pending, Chapter 4 submitted a third-party opinion letter to Taiwan’s IP Office (“TIPO”), contending that APIYOO’s application for “Sup” shall be rejected in view of likelihood of confusion with Chapter 4’s cited “Supreme” trademarks (Reg. No. 01292538, 01466427, 01511833, 01560560, 01592983, 01768673, and 01813902).

On August 23, 2021, TIPO found in Chapter 4’s favor, rejecting APIYOO’s application based on Article 30.1.11 of Trademark Act:

 

1.   Article 30.1.11 of Trademark Act provides that a trademark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

2.   With respect to determination of similarity between “Sup” and “Supreme”, TIPO determined that “Sup” is composed of “s”, “u”, and “p”, which are identical with the first three letters of “Supreme”. Thus, TIPO opines that ordinary consumers may find “Sup” associated with “Supreme”, because “Sup” and “Supreme” are verbally and visually similar with each other.

3.      With respect to the status of “Supreme”, TIPO was convinced by the records submitted by Chapter 4, which showed that since 1994, “Supreme” as a trademark has been registered and put in use by Chapter 4 throughout the world, including in China, EU, Japan, U.S., UK, and Taiwan. TIPO also affirmed that In the product field of apparel, shoe, and gloves, “Supreme” has attained the status of well-known trademark.

4.   Besides, TIPO also noted that since 2016, Chapter 4 has started using “Sup” in conjunction with its famous “Supreme” trademark, and that application for “Sup” has been filed in Norway, U.S. and Japan. Thus, based on the records of continuous trademark use and successful product sale in Taiwan, TIPO was of the view that consumers in Taiwan shall be more familiar with Chapter 4’s “Supreme”. Upon seeing “Sup”, consumers would be more inclined to think of Chapter 4’s “Supreme”, rather than APIYOO’s “Sup”.

5.   Lastly, TIPO noted that “Supreme” is highly distinctive after Chapter 4’s continuous use and marketing, and that it has been put in use on various kinds of products, including co-branded products like suitcase, shoes, case for mobile phone, purse, and diving glasses in collaboration with brands such as RIMOWA, GUCCI, CHANEL, NIKE, and LV. Hence, TIPO was convinced that “Supreme” is used and well recognized in various types of products aside from clothing, shoes, and glove.

 

In view of the above, since “Supreme” is well-known and found similar with “Sup”, consumers are more familiar with “Supreme”, and “Supreme” has been used in various kinds of products, TIPO determines that registration of “Sup” may cause consumers to misconceive that the products supplied by APIYOO are associated with or related to products supplied by Chapter 4. As a result, APIYOO’s “Sup” trademark application was rejected by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a25KQVZwSVhyelBSdnZ0dEtxZDg1Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Chanel successfully cancelled “COCORO” in view of similarity with its famous “COCO” trademark

On August 30, 2021, Taiwan’s IP Office (TIPO) determined that “COCORO”, a trademark held by COCORO Fashion Co. Ltd. (“CFC”), should be cancelled for likelihood of confusion with Chanel’s well-known trademark “COCO”.

 

Before CFC filed trademark application for its “COCORO”, Chanel’s “COCO” trademark series, including number 00624792, 00670814, and 00859991 (see below), have been confirmed by TIPO and Taiwan’s IP Court as well-known trademarks in the fields of perfumes, fashion clothing, cosmetics, and leather goods. On June 1, 2020, Chanel filed opposition against CFC, contending that CFC’s COCORO trademark violated Article 30.1.10 of Trademark Act*.

 

CFC’s contested trademark, “COCORO” (Reg. No. 02044448, see below), was filed on March 21, 2019, and granted on March 1, 2020, designated for use in goods such as clothes, sportswear, underwear, skirts, coats, jackets, shoes, sweaters, etc.

Although CFC’s “COCORO” ends with “RO”, which is different from Chanel’s “COCO”, TIPO considers such difference minor. Additionally, since both “COCORO” and “COCO” start with the same letters “CO”, TIPO is of the view that the similarity caused by the initial letters would outweigh the dissimilarity created by the ending letters, and make consumers more likely to think the two trademarks are originated from the same source. Thus, TIPO determines that “COCORO” is visually and verbally similar with “COCO”.

 

As to the designated goods, TIPO finds that Chanel’s “COCO” trademarks are also applied for use in goods such as apparel, blouses, shorts, pants, skirts, shirts, vests, gloves, boots, etc. These products, TIPO notes, like those designated by CFC’s “COCORO”, all provide similar functions and serve similar purposes, such as covering or keeping warm. Hence, TIPO determines that CFC’s “COCORO” is applied for use in similar goods.

 

Turning to the strength of the trademark, TIPO notes that there is little evidence submit by CFC to support its trademark use. In the meantime, there are lots of documents and TIPO’s prior determinations supporting the finding of well-known status of “COCO” trademarks. As a result, TIPO is convinced that consumers are more familiar with Chanel’s “COCO” trademarks.

 

In view of the similarity between “COCO” and “COCORO”, the similarity between the goods designated by “COCORO” and those designated by Chanel’s “COCO”, and the well-known status of COCO trademarks among the relevant consumers, TIPO opines that there is likelihood that consumers with ordinary degree of care would be confused by the registration of “COCORO”. Therefore, CFC’s “COCORO” is cancelled based on Article 30.1.10 of Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RENMbHBRVUdJd0V6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

*Article 30.1.10 of Trademark Act:

A mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and 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 hence there exists a likelihood of confusion on relevant consumers.