“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