On July 8, 2019, Shiseido Company, Ltd. (“Shiseido”) filed trademark application for “COGNAC DIAMOND”, which was applied for use in goods under class 3, including soap, fragrance, perfume, cosmetics, cleansing lotion, hair oil, hair conditioner, cream, lotion, cotton pad, essential oil, shampoo, conditioner, hair dye, toothpaste, etc. Shiseido’s aforesaid trademark was granted on December 16, 2019 (Reg. No. 02028451, see below)
On March 12, 2020, the Bureau National Interprofessionnel du Cognac (“BNIC”) and the Institut national de l'origine et de la qualité (INAO) filed opposition against Shiseido’s registered “COGNAC DIAMOND”, alleging that such registration violated Article 30.1.8 of Trademark Law.
Taiwan’s IP Office (“TIPO”) sided with BNIC
and INAO on November 30, 2021, determining that “COGNAC DIAMOND” should be
cancelled for such trademark might be misleading as to the quality or origin of
its designated goods.
1.
Article 30.1.8 of Trademark Law
provides that a mark shall not be registered if such a mark is “likely to
mislead the public as to the nature, quality, or place of origin of the goods
or services”.
2.
Based on the relevant French
regulations, reports on Wikipedia, and the magazines that introduces French wine,
TIPO agreed that before December 16, 2019, “Cognac” has been widely understood
and recognized by the general public as the name of place where the classic brandy
is made. In other words, ordinary consumers would know “Cognac” refers to a
specific place in western France that is well-known for its brandy production.
3.
When examining Shiseido’s “COGNAC
DIAMOND”, TIPO noted that in comparison with “COGNAC”, “DIAMOND” is a common and
less distinctive word that consumer with ordinary care would not pay attention
to. Thus, TIPO was of the view that “COGNAC” constitutes the main distinctive
portion of Shiseido’s contested trademark.
4. Considering the facts that “Cognac” is generally perceived as the name of the place in France that produces well-known brandy, and that “COGNAC” would be the distinctive portion of Shiseido’s contested trademark, TIPO concluded that consumers may mistakenly believe that the cosmetic products designated by Shiseido’s “COGNAC DIAMOND” are associated with or relevant to the aforesaid region of western France, and confuse the quality, origin, or nature of the designated products.
In view of the above, TIPO determined that Shiseido’s “COGNAC DIAMOND” should be cancelled accordingly.
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