Chanel prevailed in opposition for its famous “N°5” trademark

On September 28, 2022, Taiwan’s IP Office (“TIPO”) sided with Chanel, cancelling a contested trademark in view of likelihood of confusion with Chanel’s famous brand “N°5” (Reg. No. 00053150 and 00054210, see below).

The contested trademark, “NO15” (Reg. No. 02133207, see below), was filed on October 28, 2020, and granted on April 16, 2021, designated for use in goods under class 3, including, among the others, nail polish, lotion, cosmetic, skin care product, mask, perfume, cosmetic hair oil, artificial fragrance, air fragrance, fragrance, skin care products, toners, skin care lotions, etc. Subsequently, Chanel filed opposition against the contested trademark on July 13, 2021, citing violation of Article 30.1.11 of Trademark Law.

In its determination, TIPO finds in favor of Chanel based on the following reasons:

1.    According to Article 30.1.11 of Trademark Law, a mark shall not be registered if such a mark is: 1) being identical with or similar to another person’s well-known trademark or mark, and 2) 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.    TIPO notes that “N°5” was registered as trademarks by Chanel in Taiwan in as early as 1972. Through Chanel’s continuous efforts in marketing and using, Chanel’s “N°5” has become a well-known perfume brand. In Taiwan, “N°5” has also been recognized as a famous trademark by TIPO in its prior determinations. Before the filing date of the contested trademark “NO15”, Chanel’s “N°5” has become well-known in the field of perfume products.

3.    As to similarity, TIPO takes the view that while the contour of the letter “O” presented in the contested “NO15” trademark features the shape of a bottle, such design is relatively smaller and placed at the upper side of the letter “N”. Thus, when being viewed in its entirety, the visual impression formed by the contested trademark would be “N°15”, which is similar with Chanel’s “N°5”.

4.    The goods designated by the contested trademark are also products related to beauty and personal care. TIPO posits that these products are related goods because they are cosmetic and may be used in conjunction with perfume. Therefore, TIPO considers “NO15” and “N°5” are used in similar products.   

5.    TIPO further notes that Chanel’s “N°5” is highly distinctive, and has been famous as a perfume brand for a very long time. Therefore, ordinary consumers are more familiar with Chanel’s “N°5”. In contrast, there is no evidence of use regarding the use of “NO15”.

 

In light of the similarity between “N°5” and “NO15”, the well-known status of Chanel’s “N°5”, the fact that “N°5” and “NO15” are used in similar goods, and consumers’ familiarity with the successful perfume brand, TIPO holds that registration of “NO15” may cause confusion with Chanel’s well-known “N°5”. Hence, the contested trademark is cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4eFEyV2x4OUZkZENQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

GIORGIO ARMANI successful in reversing the unfavorable determination made by Taiwan’s IP office as to its “AJ” trademark

On August 3, 2022, the Petition and Appeal Committee of Ministry of Economic Affair (“Appeal Committee”) entered decision in favor of GIORGIO ARMANI, finding there might be confusion with its “AJ” trademarks (Reg. No. 01766270 and 01768516, see below) due to registration of QMI INDUSTRIAL CO., LTD.’s (“QMI”) contested trademark.

 

QMI’s contested trademark, no. 02124952 (see below), was filed on September 17, 2020 and granted on March 1, 2021, designated for use in goods under class 25, such as suits, skirts, shorts, coats, capes, trousers, T-shirts, headbands, headscarves, neck scarves, hats, dress gloves, etc. GIORGIO ARMANI filed opposition on June 1, 2021, citing violation of Article 30.1.10 of Trademark Act. 

Taiwan’s IP Office (“TIPO”) denied GIORGIO ARMANI’s opposition, finding there is only low degree of similarity between QMI’s and GIORGIO ARMANI’s trademarks. GIORGIO ARMANI challenged TIPO’s finding in Appeal Committee.

In its determination, the Appeal Committee sides with GIORGIO ARMANI and holds the view that although there are other decorative elements presented in QMI’s contested trademark, such features are drawings and would be less likely to be distinctive from the perspective of ordinary consumers. As a result, consumers would still view “AJ” as the dominant portion of QMI’s trademark. Similarly, while there are additional artistic elements like arrows and icon of eagle embedded in GIORGIO ARMANI’s cited trademarks, the letters “AJ” still constitute the dominant portion and would be used by consumers to identify the source of the goods and services. Thus, the Appeal Committee opines QMI’s contested trademark is similar with GIORGIO ARMANI’s cited trademarks. TIPO’s determination finding there is merely low degree of similarity is erroneous.

Given that there is considerable similarity between QMI’s contested trademark and GIORGIO ARMANI’s cited trademarks, that both QMI’s and GIORGIO ARMANI’s trademarks are applied for use in similar apparel and clothing products, and that GIORGIO ARMANI’s trademarks are distinctive, the Appeal Committee vacated TIPO’s decision and remanded the case back to TIPO.

 

Source:

Appeal Committee’s determination:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20221015_decisionDownload-A211103002_180000_685_AftcmlvBvW/

TIPO’s determination:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4S2puaE1mS1IrbEFJdkZvZWMzaWdrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled trademark “CSI TAIWAN CRIME SCENE INVESTIGATION” over likelihood of confusion with the popular “CSI” TV drama

“CSI: CRIME SCENE INVESTIGATION”, sometimes referred to as “CSI”, is a popular American crime TV drama that was aired on CBS network in September of 2000, and has gained worldwide popularity since then. In Taiwan, the TV series is not only phenomenal, its title “CSI: CRIME SCENE INVESTIGATION” was also registered as trademark by DALTREY FUNDING LP (“Daltrey”), a CBS’s affiliate, in as early as 2004, and Daltrey has acquired series of trademark registrations for “CSI” over the years (Reg. No. 01091769, 02030444, and 02048892, see below, together referred to as “CSI”). 

The contested trademark, “CSI TAIWAN CRIME SCENE INVESTIGATION” (Reg. No. 02052756, see below), was filed on January 25, 2018, and granted on April 16, 2020, designated for use in goods under class 9, including devices like computer hardware, computer software, laboratory instruments, magnifying glasses, microscopes, telescopes, imaging and sound transmission equipment, spectrometers, chemical devices, chemical instruments, physical devices, physical instruments , observation instrument, etc. Daltrey filed opposition on July 16, 2020, citing violation of Article 30.1.11 of Trademark Law.

 

After reviewing Daltrey’s opposition and the responses of owner of the contested trademark, Taiwan’s IP Office (“TIPO”) sided with Daltrey on August 31, 2022, finding registration of the contested trademark would cause confusion with the famous CSI trademarks:

 

1)      Article 30.1.11 of Trademark Law provides that a trademark 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)      As to CSI’s status as being well-known, TIPO finds for Daltrey, considering the cited CSI trademarks have become well-known after continuous and profound marketing and promotion of the TV series, including the broadcasting on TV channel (AXN), the streaming via platform such as Netflix, and the mass media exposure over the years.

3)      TIPO also notes that both the contested trademark and the cited CSI trademarks present “CSI” and “Crime Scene Investigation”, which makes the contested trademark conceptually and visually similar with Daltrey’s famous trademarks.

4)      Although “Crime Scene Investigation” is descriptive, “CSI” is a combination of the initials of “Crime Scene Investigation”, and thus demonstrates considerable distinctiveness. Such unique combination of initials, when being used in products and services like DVD or drama production, could be distinctive.

5)      In addition to TV drama, the cited CSI trademarks have been used in diverse merchandise, such as books, games, etc. There is no doubt that consumers would be more familiar with Daltrey’s CSI trademarks than the contested trademark. Further, one popular theme of the successful TV series has been forensic investigation, which needs to use various kinds of observation instruments and lab tools. The use of these devices in the “CSI” TV series has formed strong impression among the consumers. When using the contested trademark on these devices, it is likely that consumers may be confused and misunderstand the origin or relationship of the services or products represented by these two trademarks.

 

In view of the well-known status of “CSI” trademarks, the similarity between the contested trademark and the cited CSI trademarks, consumer’s high familiarity with the CSI trademarks, and the fact that the contested trademark is used in related products, TIPO determines that the registration of the contested trademark may cause confusion with Daltrey’s famous “CSI” trademark. As such, the registration of “CSI TAIWAN CRIME SCENE INVESTIGATION” is canceled accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUwzcXpWMkRTZi9iZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true