CHANEL scores a win for its “CHANCE” trademark in opposition against “All Chance”

“CHANCE” (Reg. No. 00532971, see below) is a trademark filed and registered by CHANEL in Taiwan in as early as 1991, designated for use in fragrances, lotions, deodorant, and cosmetics. Over the years, “Chance” has gathered considerable popularity through CHANEL’s use on series of its perfume and cosmetic products.

On April 24, 2020, a Taiwan-based company “All Chance Co. Ltd.” filed trademark application for “All Chance” (Reg. No. 02105460, see below), which was granted on December 1, 2020, designated for use in numerous services under class 35, such as advertising concept development, online advertising design, advertising promotion, advertising agency, business research, marketing consultants, internet shopping, retail and wholesale of cosmetics, and retail and wholesale of maternity and infant products.

CHANEL filed opposition against “All Chance” on February 26, 2021, alleging that for the service “retail and wholesale of cosmetics”, the registration of the contested trademark violates Article 30.1.10 of Trademark Act.

 

On November 30, 2022, Taiwan’s IP Office (“TIPO”) sided with CHANEL, finding “All Chance” used for “retail and wholesale of cosmetics” would cause confusion with CHANEL’s cited trademark “CHANCE”:

 

1.    On similarity, TIPO holds that “All Chance” is conceptually and visually similar with “Chance”. The additional word “All” is not distinctive and would not be sufficient to make “All Chance” as a whole distinguishable from “CHANCE”. Ordinary consumers would still find “Chance” constitutes the dominant portion of the contested trademark.

2.    TIPO also notes that CHANEL’s “CHANCE” is applied for use in cosmetic products, and “All Chance” is used for retail and wholesale of cosmetics. Both the products and services pertain to beauty, body cleaning, personal hygiene, or similar functions. Thus, TIPO is of the view that ordinary consumers would consider the designated goods and services related to each other.

3.    On distinctiveness, TIPO opines that while “CHANCE” has ordinary meaning, it is still distinctive for it bears no relationship with the nature or function of the designated cosmetic products. Besides, due to CHANEL’s years of marketing and use, “CHANCE” has been quite popular, and the relevant consumers are more familiar with CHANEL’s “CHANCE”.

 

In view of the above, given the similarity between “CHANCE” and “All Chance”, the relatedness between the designated cosmetic products and the retail service, the distinctiveness of “CHANCE”, and the fact that consumers are more familiar with CHANEL’s cited trademark, TIPO finds registration of “All Chance” for service under “retail and wholesale of cosmetics” would cause confusion with CHANEL’s “CHANCE” among the relevant consumers.

 

As a result, TIPO rendered a determination in CHANEL’s favor.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YnE2UUNMVDN5OWRYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

NFL prevailed over INNI in trademark opposition for Dallas Cowboys' Team Icon

On November 9, 2022, Taiwan’s IP Office (“TIPO”) cancelled trademark no. 02115134, a trademark filed and held by INNILINK creative Corporation, finding the cancelled trademark confusingly similar with the icon of the popular NFL team Dallas Cowboys.

 

The icon of the Dallas Cowboys is a trademark owned by NFL Properties LLC (“NFL”). Such trademark was registered by TIPO in as early as September 16, 1999 (Reg. No. 00868102, see below), designated for use in goods under class 25, such as socks, hats, etc.

The contested trademark  (see below) was filed by a company called INNILINK Creative Corporation (“INNI”) on August 10, 2020, and was granted for registration on January 16, 2021, designated for use in goods under class 25, including swimsuits, clothing, scarf, neckties, hats, gloves, etc.

NFL filed opposition against INNI on April 16, 2021, citing, among the others, violations of Article 30.1.10 of Trademark Act. TIPO sided with NFL on November 9, 2022, finding that:

 

1.    INNI’s contested trademark is similar with Dallas Cowboys’ team icon. Both trademarks present the visual impression of overlapping black and white stars. While INNI’s star contains more decorative symbols, such difference is minor. In its entirety, TIPO finds INNI’s contested trademark visually and conceptually similar with Dallas Cowboys’ star icon.

2.    TIPO also notes that both INNI’s contested trademark and Dallas Cowboys’ icon are applied for use in similar products. For example, INNI’s trademark is designated for use in apparel and clothing, and such products are usually used in conjunction with accessories like hats and gloves, which serve similar purpose for covering human body and keep warm. Moreover, these products are usually available through similar sales channels. Ordinary consumers, if seeing similar trademarks, may consider these products originated from the same supplier.

3.    Plus, TIPO is aware that Dallas Cowboys’ icon has been popular and enjoys wide recognition in the relevant market due to NFL’s continuous marketing and promoting. Such team icon is highly distinctive, and consumers are more familiar with the icon of the highly popular NFL team.

4.    Given that INNI’s trademark is similar with Dallas Cowboys’ icon, that both trademarks are applied for use in similar products, and that Dallas Cowboys’ icon is distinctive and more recognizable among consumers, TIPO concludes that registration of INNI’s star logo is likely to cause confusion with Dallas Cowboys’ icon among the relevant consumers. As such, INNI’s star logo is cancelled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c3laN1RISjB2Rjc2MktZTGVWNnVnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true