Conde Nast ASIA/PACIFIC, INC. (“Conde Nast”), the registrant of trademarks no. 01307044 and 00949897 (see below), filed opposition against CHUNG WEI BIOMEDICAL CO., LTD. (“CWB”) on March 15, 2021, alleging that CWB’s trademark “VOGUE BEAUTY” should be cancelled for causing confusion with Conde Nast’s famous “VOGUE” trademarks.
The
contested trademark, CWB’s “VOGUE BEAUTY”, was filed for registration on April
14, 2020, and granted December 16, 2020 (Reg. No. 02109293, see below), designated
for use in rental service for e-book reader under class 41. Conde Nast contended
that registration of “VOGUE BEAUTY” violates, among the others, Article 30.1.10
of Trademark Law, which provides that 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.
Taiwan’s IP Office (“TIPO”) sided with Conde Nast on November 25, 2021, finding that registration of “VOUGE BEAUTY” should be cancelled for being confusingly similar with Conde Nast’s “VOGUE” trademarks:
1.
Similarity
of Trademark:
TIPO finds CWB’s “VOGUE
BEAUTY” similar with Conde Nast’s “VOGUE”. Although “VOGUE” and “BEAUTY” are common
words with ordinary meanings, TIPO opines that when viewing “VOGUE BEAUTY”,
consumers would not consider such combination of words creates unique meaning. Since
both “VOGUE BEAUTY” and “VOGUE” share the same word “VOGUE”, CWB’s contested
trademark is considered visually and verbally similar with Conde Nast’s “VOGUE”.
2.
Similarity
of goods and services
TIPO notes that CWB’s “VOGUE
BEAUTY” is designated for use in rental service for e-book reader, while Conde
Nast’s “VOGUE” are designated for use in products like “electronic publication”
and “books and magazines downloadable from internet”, which seem to be
different from each other. However, in view of the trend of digitization of publications,
the use of e-book will only become more and more popular. Under this context, TIPO
finds that the products designated by Conde Nast’s “VOGUE” (i.e., electronic
publication and downloadable books) may be provided through using the service
designated by CWB’s “VOGUE BEAUTY” (i.e., rental service for e-book reader). To
this respect, the designated products and service actually serve the same or relevant
purpose for consumers. Thus, TIPO considers the services designated by CWB’s
trademark somewhat associated with the products designated by Conde Nast’s “VOGUE”.
3.
Strength
of the trademark:
TIPO further finds that based
on the evidence of profound use of Conde Nast’s “VOGUE” trademark, including
the successful and continuous publishing of the world-wide famous fashion magazine
“VOGUE”, and the development of its associated cosmetic and beauty service, Conde
Nast’s alleged trademarks have become famous among the relevant consumers.
In
view of the above, considering that Conde Nast’s “VOGUE” is well-known, that CWB’s
“VOGUE BEAUTY” is similar with Conde Nast’s “VOGUE”, that CWB’s “VOGUE” is
applied for use in associated services, and that consumers are more familiar
with Conde Nast’s famous “VOGUE” trademark, TIPO determines that registration
of CWB’s “VOGUE BEAUTY” would cause confusion with Conde Nast’s famous “VOGUE”
trademarks. As a result, TIPO rules that CWB’s “VOGUE BEAUTY” should be
cancelled accordingly.
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