“Cocoella” was cancelled due to similarity with Coca-Cola’s famous mark

On July 28, 2022, Taiwan’s IP Office (“TIPO”) ruled in favor of The Coca-Cola Company, finding that the registration of trademark no. 02097396 may cause confusion with the beverage giant’s famous trademark “Coca-Cola” (Reg. No. 00425275, see below). 

The application of the contested trademark (see below) was filed on March 17, 2020, and was granted on November 1, 2020. The contested trademark was applied for use in goods in class 24, mainly including blankets, sheets, bed covers, mattress, quilts, towels, etc. Coco-Cola filed opposition on January 29, 2021, citing violations of Article 30.1.10 and 30.1.11 of Trademark Law.

In its determination, TIPO sided with Coca-Cola, finding “Cocoella” is confusingly similar with “Coco-Cola”: 

1.    First, TIPO notes that Coca-Cola’s cited trademark is designated for use in products including cotton, silk, and wool blankets, which are also used for covering while one sleeps. The nature, function, and purpose of these products are similar with those of goods in which the contested trademark is applied for use. Hence, “Cocoella” and “Coca-Cola” are designated for use in similar goods.

2.    As to the similarity between “Cocoella” and “Coca-Cola”, TIPO is of the view that while there are additional decorative elements, such as the crown and stars, presented in the contested trademark, the letters still constitute the dominant portion of the trademark. When comparing “Cocoella” against “Coca-Cola” as a whole, there is only slight difference in the word style and font size. Plus, the products in which the two trademarks are applied for use are not high-priced products, which normally would attract consumers’ high level of attention. When consumers’ level of attention is not high, TIPO opines they may not be able to discern such slight difference between “Cocoella” and “Coca-Cola”. Thus, “Cocoella” should be similar with “Coca-Cola”.

3.    When evaluating the strength of the trademark, TIPO finds “Coca-Cola” is not only famous in the field of carbonated drinks, but also has been put in use on diverse merchandise, including pillow, umbrella, socks, hats, key rings, etc. Therefore, “Coca-Cola” is obviously more famous and distinctive than “Cocoella”. Consumers are more familiar with “Coca-Cola” than “Cocoella”.

In view of the similarity between “Cocoella” and “Coca-Cola”; the fact that “Cocoella” is applied for use in goods that are similar with products in which “Coca-Cola” is applied for use; consumers’ high familiarity with “Coca-Cola”; and the diversity of Coca-Cola’s products; TIPO concludes that the registration of “Cocoella” may cause confusion with “Coca-Cola”. As a result, the contested trademark is cancelled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ckZtQXpYR1ZmaXJweE5GQzE5Ykdqdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true    

Taiwan’s IP Office denied application for “ApplePie” in view of Apple Inc.’s iconic brand

On July 15, 2022, Taiwan’s IP Office (“TIPPO”) rejected trademark application for “ApplePie”, citing likelihood of confusion with “APPLE”, the famous brand of Apple Inc. (See below).

 

The application was filed on December 22, 2021 (see below), applying for use in goods under class 9, including satellite navigation Devices, GPS satellite signal receivers, satellite signal Receivers, internet equipment, internet sharing devices, vehicles navigation device, sound transmission device, sound transmission device, and video transmission device.

TIPO’s denial is based on the following:

1.      Article 30.1.10 of Trademark Law 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.

2.      As to similarity, TIPO finds “ApplePie” is highly similar with “APPLE”. The additional “Pie” presented in the application is insufficient to differentiate “ApplePie” from “APPLE”.

3.      As to the similarity of goods, the electronic products designated by applicant are related to products and services designated by Apple Inc.’s cited trademark (e.g., computers, mobile devices, navigating devices, computer hardware and software development, software for navigating and searching database, etc.), for they are usually sold or supplied through the same or related channels with overlapping customer base, and provide similar functions.

4.      TIPO further notes that Apple Inc.’s trademarks possesses great distinctiveness for the word “APPLE” bears no direct relationship with the nature or function of the products or services it represents. Thus, consumers are inclined to consider “APPLE” as sign indicating the source of the supplied goods or services.

5.      Given that “ApplePie” is highly similar with “APPLE”, that both marks are designated for use in associated or related goods, and that “APPLE” demonstrates great distinctiveness, TIPO opines it is likely that consumers may be confused and believe that the goods represented by “ApplePie” is also originated from or is related to Apple Inc. Therefore, the application is denied accordingly.

 

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cFM4YWpWalQ2U3RmYWxyZHA3R3dZUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true