Taiwan’s IP Office cancelled trademark featuring bat silhouette in view of opposition filed by DC Comics

On February 23, 2022, Taiwan’s IP Office (“TIPO”) sided with DC Comics in its opposition against trademark no. 02100701, finding the contested trademark is filed out of registrant’s intent to imitate DC Comics’ famous bat emblem (see below).

 

The contested trademark (see below) was filed on June 17, 2020, and granted on November 16, 2020, designated for use in goods under class 18, such as backpack, shoe bag, suitcase, shopping bag, trekking poles, umbrellas, etc. 

DC Comics filed opposition on February 17, 2021, contending the registration of the contested trademark violated Article 30.1.12 of Trademark Law, which provides that a mark shall not be registered if such a mark is:1) being identical with or similar to another person’s earlier used trademark, and 2) to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, 3) where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.

 

Here, TIPO finds for DC Comics based on the following reasons:

1.    Based on evidence submitted by DC Comics, it is clear and undisputed that DC Comics’ Bat Emblem has been put in used on various kinds of products since as early as 1997, including, among the others, clothing, hats, backpacks, shoes, and umbrellas that feature the well-known Bat Emblem. Thus, there is no doubt that DC Comics’ Bat Emblem is an earlier used trademark.

2.    TIPO also notes that both trademarks feature bat silhouettes, which constitute the dominant portion of the trademarks. In addition, TIPO considers the overall contour and the style of the bat silhouette presented in the contested trademark are highly similar with those presented in DC Comics’ Bat Emblem. In other words, the contested trademark is visually and conceptually similar with DC Comics’ Bat Emblem. 

3.    Further, TIPO is aware that the contested trademark is applied for use in goods that is similar with or relevant to products in which DC Comics’ Bat Emblem is applied for use. It is likely that consumers would perceive products bearing the contested trademark to be associated with product supplied by DC Comics.

4.    Considering the facts that DC Comics has put its Bat Emblem in use for a very long time, and that the Bat Emblem is distinctive and has become well-known among the relevant consumers and fans, TIPO is of the view that it is unlikely that the registrant would file application for such a highly similar trademark out of pure coincidence. As such, TIPO determines that the total circumstances justify a finding of registrant’s intent to imitate DC Comics’ Bat Emblem, and that the contested trademark should be cancelled in view of Article 30.1.12 of Trademark Law.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SVhrTWdLcGlIQlhReUlOYThiUElaUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“KOKOHOM” found confusingly similar with Chanel’s famous “COCO” trademark

On January 28, 2022, Taiwan’s IP Office (“TIPO”) cancelled “KOKOHOM” over Chanel’s opposition, finding the registration of “KOKOHOM” trademark would cause confusion with Chanel’s well-known trademarks “COCO” (Reg. No 624792, 670814, and 859991, see below).

The application of the contested trademark, “KOKOHOM” (Reg. N0. 02147746, see below), was filed on January 20, 2021, and granted on June 16, 2021, designated for use in goods under Class 25, including, among the others, underwear, skirt, casual wear, pants, pajamas, etc. Chanel filed opposition on September 14, 2021, arguing the registration of “KOKOHOM” would violate Article 30.1.10 of Trademark Law. 

 

In its determination, TIPO found in Chanel’s favor, reasoning that:

1.    Firstly, “KOKOHOM” is verbally similar with “COCO”. While there is additional word “HOM” presented, TIPO considers “HOM” would be perceived as “HOME”, which carries the meaning of ‘HOME Page“. As such, consumers are inclined to perceive “HOM” as descriptive, and “KOKO” would constitute the dominant part of the contested trademark. In this light, TIPO opines there is medium degree of similarity between “KOKOHOM” and “COCO”.

2.    Turning to the similarity of the designated goods, TIPO notes that “KOKOHOM” is applied for use in apparels, which are similar with the products that Chanel’s cited trademarks are designated for use. For example, Chanel’s “COCO” is also applied for use in clothings, sweater, pants, gloves, etc., which serve similar or associated function. Thus, TIPO determines that “KOKOHOM” is applied for use in products that are similar with those designated by Chanel’s “COCO”. 

3.    Furthermore, TIPO recognizes that Chanel’s “COCO” is distinctive and has become well-known among the relevant consumers. In comparison with the voluminous records of trademark use submitted by Chanel, there is little evidence submitted to support the recognizability of “KOKOHOM”. Thus, TIPO considers “COCO” is more distinctive and the relevant consumers are more familiar with “COCO.”

4.    In light of the above, since consumers are more familiar with “COCO”, there is medium degree of similarity between “KOKOHOM” and “COCO”, and both “KOKOHOM” and “COCO” are applied for use in similar products, it is likely that consumers may be misled into believing that products bearing “KOKOHOM” and “COCO” are from the same source. Hence, TIPO determines that the registration of “KOKOHOM” might cause confusion with “COCO”, and should be cancelled accordingly.

 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZjlxN2RzTUo3d2kzdW93Vms0WXBWUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true