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.