HAIR O'RIGHT INTERNATIONAL CORPORATION (“HOI”), a popular hair care brand in Taiwan, filed trademark opposition against KD FLASH CO., LTD. (“KD FLASH”) on June 30, 2020, contending the trademark registered by KD FLASH would cause confusion with HOI’s well-known ”O’right” trademarks (Reg. No. 01253931, 01790502, 01792778, 01793624, 01600087, and 01736407, see below)
KD FLASH’s contested trademark, “AllrightDog”
was filed on August 14, 2019, and granted on April 1, 2020 (Reg. No. 02049347,
see below), designated for use in goods under class 3, including animal
cosmetics, animal hair scouring agent, pet bath lotion, drug-free pet hair
scouring agent, pet deodorant, drug-free animal hair scouring agent, air
fragrance, canned for cleaning and dust removal Pressurized air, and
non-medical oral cleaner.
On October 29, 2021, Taiwan’s IP Office (“TIPO”) sided with HOI, finding KD FLASH’s contested trademark would cause confusion with HOI’s “O’right” trademarks:
1.
TIPO first finds that HOI has
submitted sufficient records, including sales records, marketing materials,
worldwide trademark registrations of O’right, exhibition documents, and the
exposure on mainstream social media such as Facebook, Instagram, and YouTube, for
proving the well-known status of HOI’s asserted trademarks “O’right” trademarks.
TIPO is convinced that before the filing date of KD FLASH’s contested
trademark, “O’right” has become famous and achieved great popularity among the
relevant consumers.
2.
As to similarity, both HOI’s “O’right”
and KD FLASH’s “AllrightDog” contain the word “right”, and the pronunciation of
“O’right” and “All Right” is similar. Thus, TIPO is of the view that KD FLASH’s
“AllrightDog” is verbally and visually similar with HOI’s “O’right”
3.
TIPO notes that KD FLASH’s “AllrightDog”
is applied for use in cleaning products for pet, and HOI’s “O’right” is designated
for use in hair care products for human. While these two products seem to be different,
TIPO posits that nowadays more and more pet owners consider their pets as their
own children, and that for those pet owners, the line that distinguishes product
for human from product for pet is not always clear-cut. Added to that, “O’right”
is already a famous trademark, so it would be reasonable for consumers to expect
that the territory of HOI’s “O’right” trademark would reach products for pet
use. Therefore, TIPO considers the products designated by KD FLASH’s “AllrightDog”
is similar with those designated by HOI’s “O’right”.
4.
TIPO further determines that
HOI’s “O’right” trademarks are distinctive when applying for use in cleaning and
cosmetic products for human, and that KD FLASH has not submitted enough
evidence to convince TIPO that its “AllrightDog” trademark is also famous and could
be distinguished from HOI’s “O’right” among the relevant consumers. Therefore,
TIPO sees HOI’s “O’right” trademarks in a more favorable light because they are
distinctive, and consumers are more familiar with them.
In view of the above, since “O’right” is well-known, consumers are more familiar with “O’right”, KD FLASH’s “AllrightDog” is similar with “O’right”, and KD FLASH’s “AllrightDog” is applied for use in similar products, TIPO determines that KD FLASH’s “AllrightDog” should be cancelled because such trademark may cause confusion with HOI’s famous “O’right” trademarks.
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