Taiwan’s IP Office confirms the bottle of Chanel’s N°5 is well-known

On April 29, 2022, Taiwan’s IP Office (“TIPO”) cancelled trademark no. 02091039, finding the bottle icon presented in the contested trademark would cause confusion with bottle of Chanel’s worldwide famous N°5 perfume. 

In its determination, TIPO finds that based on the voluminous evidence of use and marketing materials, not only the N°5 perfume itself, but also the bottle for the popular perfume brand, has achieved the status of well-known trademark. For example, the evening bag featuring the appearance and shape of N°5 bottle introduced by Chanel in 2014 was a huge success, and has remained popular nowadays. Chanel also registered its N°5 bottle as trademarks in Taiwan (Reg. No. 01629318 and 00010123, see below).

On the other hand, the contested trademark, no. 02091039, was filed for application on March 18, 2020, and granted on October 1, 2020. The contested trademark was applied for use in services under class 41, including various kinds of training, counseling, tutoring, and educational services. Chanel filed opposition on December 31, 2020, alleging the registration of the contested trademark violates, among the others, Article 30.1.11 of Trademark Law. 

TIPO opines that the bottle icon presented at the center of the contested trademark is highly similar with Chanel’s famous trademarks. Although there are two overlapping pentagons presented in the contested trademark, such elements are insufficient to create any difference. The bottle icon is still the dominant portion of the contested trademark. Thus, TIPO finds the contested trademark, as a whole, is highly similar with Chanel’s aforesaid well-known trademarks.

While the contested trademark is designated for use in educational service, which is different from the perfume products designated by Chanel’s trademarks, TIPO notes that Chanel’s N°5 products are quite diversified, and that there is evidence showing the registrant of the contested trademark is providing training and educational service related to fragrance and essence. Thus, it is still likely that consumers may be misled into believing that the contested trademark is related to or associated with Chanel’s well-known N°5 perfume brand.

In view of the above, the contested trademark is cancelled by TIPO accordingly.

Source: 

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZC9zTkZvVjlrSXFZd0lRTlBIemVjdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

 

Foodpanda successfully challenged another “foodpanda” trademark in opposition proceeding by exerting its well-known status in food delivery service

On March 31, 2022, Foodpanda, one of the leading food delivery platforms in Taiwan, successfully canceled trademark registration No. 02103953 (the ‘953 trademark) for such a mark may cause confusion with its highly popular brand name.

 

The contested trademark, ‘953 trademark (see below), was filed for registration on May 7, 2020, and granted on December 1, 2020, designated for use in goods under class 9, including headphones, audio speakers, driving video recorders, microphones, video recording appliances, wireless headphones, hand-free device, etc. Foodpanda filed opposition against ‘953 trademark on February 25, 2021, alleging registration of ‘953 trademark violated, among the others, Article 30.1.11 of Trademark Act.

Taiwan’s IP Office (“TIPO”) sided with Foodpanda on March 31, 2022, finding the registration of ‘953 trademark would cause confusion with the famous brand name of the food delivery service:

 

1.    Per Article 30.1.11, a mark shall not be registered if such a mark is being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

2.    Based on the evidence submitted by Foodpanda, including the news reports, marketing documents, records of exposure on social media platforms, and audio-visual advertising materials, TIPO is convinced that prior to May 7, 2020, “Foodpanda” has become famous and well-known among the public for food delivery service in Taiwan.

3.    As to similarity, it is clear that the contested ‘953 trademark is identical with the famous “Foodpanda” brand name, because both feature the same words.

4.    Since the famous brand name “Foodpanda” demonstrates a unique combination of two unrelated word “food” and “panda”, TIPO is of the view that “Foodpanda” as a brand name is highly distinctive. Besides, TIPO notes that consumers are more familiar with such brand name after Foodpanda’s continuous and successful marketing and promoting.

5.    Although the contested ‘953 trademark is applied for use in goods like headphones, microphones, driving video recorders, etc., TIPO considers these products are devices and tools that are commonly used by Foodpanda’s deliverymen when providing their delivery services. TIPO thus holds the view that the products which ‘953 trademark is applied for use are related to or associated with the service provided by Foodpanda.

6.    In view of the above, given that Foodpanda as a brand name is already famous and more well-known prior to the filing date of ‘953 trademark, that the contested ‘953 trademark is identical with Foodpanda’s brand name, and that the ‘953 trademark is designated for use in goods that are associated with or relevant to the food delivery service, TIPO determines that the registration of ‘953 trademark may cause confusion with Foodpanda’s famous brand name. Therefore, the registration of ‘953 trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZVJ0cUpFNEIrTnhWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true