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.
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