On January 13, 2023, Taiwan’s IP Office (“TIPO”)
found trademark “Joereal” should be canceled in view of likelihood of confusion
with senior trademarks “L’OREAL” (Reg. No. 00293516, 00313008, 00321107,
00323205, and 02132673, together as “L’OREAL”, see below) held by the French beauty
giant L'OREAL, S.A.
The canceled trademark, “Joereal” (Reg. No.
02156922, see below), was filed on January 22, 2021, and granted for
registration on August 1, 2021. “Joereal” was applied for use in goods in class
3, including cosmetics, collagen preparations for cosmetic use, creams for
whitening skin, masks, face creams, skin care products, skin care lotions,
makeup removers, shampoos, hair care products, cleanser for human body, soap,
mouthwash, etc. L'OREAL, S.A. filed opposition against “Joereal” on October 29,
2021, alleging violation of, among the others, Article 30.1.10 of Trademark
Act.
TIPO sides with L'OREAL, S.A. in its
determination of January 13, 2023:
1.
Article 30.1.10 of Trademark
Act provides that a mark shall not be registered if such a mark is “being
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.
On similarity of trademark, TIPO
holds the view that while “Joeoreal” is slightly different from “L’OREAL” in
its composition of characters, the pronunciation of “Joereal” is similar with
that of “L’OREAL”. TIPO agrees with L'OREAL, S.A. and finds there should be medium
degree of similarity between “Joereal” and “L’OREAL”.
3.
As to the designated use of goods,
TIPO finds that trademark “L’OREAL” is not only applied for use in various
kinds of cosmetics such as perfume, lipstick, eyeshadow, eyeliner, etc., but also
body cleansers including bath gel, lotion, body powder, shampoo, soap, conditioner,
etc. As such, TIPO considers “Joereal” and “L’OREAL” are applied for use in
similar goods. They serve similar or related functions, and are usually sold to
consumers via similar channels. The degree of similarity is high.
4.
Based on the report of internet
search result, trademark search report, and report of Wikipedia, TIPO finds the
records submitted by L'OREAL, S.A. sufficient to prove that “L’OREAL” has been
widely used on numerous makeup and cosmetics, and has established popularity and
recognizability among the relevant consumers. In comparison, TIPO finds there
is little record supporting the distinctiveness of “Joereal”. Hence, on the determination
of distinctiveness, TIPO finds such factor tips to the favor of L'OREAL, S.A.
In view of the above, given that there is medium
degree of similarity between “L’OREAL” and “Joereal”, that the designated
products of “Joereal” are highly similar with and related to those designated
by “L’OREAL”, and that “L’OREAL” is highly distinctive and more recognizable by
the consumers, TIPO concludes that the registration of “Joereal” may cause
confusion among the relevant consumers due to its similarity with “L’OREAL”. As
a result, registration of “Joereal” is canceled accordingly.
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