ROGER VIVIER S.P.A. successful in trademark opposition against “RV REESEY VIVIER”

On December 30, 2021, ROGER VIVIER S.P.A. (“RV”), the registrant of Taiwan trademarks no. 01168072 and no. 01064655 (see below), filed opposition against the registration of trademark “RV REESEY VIVIER”, alleging that the registration of the contested trademark violated Article 30.1.10 and 30.1.11 of Trademark Act.

 

The contested trademark, “RV REESEY VIVIER” (Reg. No. 02171642, see below), was filed for registration on September 22, 2020, and granted on October 1, 2021, designated for use in goods under class 3, including cosmetic and personal hygiene products such as facial creams, skin care, shampoo, sunscreen, body lotions, etc.

 

Taiwan’s IP Office (“TIPO”) found for RV on July 11, 2023, determining that the registration of the contested trademark has violated Article 30.1.1 of Trademark Act:

 

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, TIPO notes that the contested trademark consists of “REESEY VIVIER”, “RV”, and an oval decorative ring with small words “REESEY VIVIER A PARTIR DE BEAUTE MEDICALE PRODUITS DE S0INS AVANCES” embedded within said ring. Since the small words embedded in said oval ring are French that describes the nature and quality of the designated product, TIPO considered these words descriptive and would not be considered distinctive by the consumers. Therefore, the words “REESEY VIVIER”, and “RV” featured in the contested trademark would form the major impression upon the consumers. In this regard, the contested trademark is visually, conceptually, and orally similar with RV’s cited trademarks, which also feature “RV” and similar word “ROGER VIVIER”.

3.      As to similarity of the designated products, RV’s cited trademarks are designated for use in products like perfume, deodorants, soaps, shaving soaps, hair conditioners, etc. While these products are not identical to those designated by the contested trademark, they serve similar purposes for cleaning and deodorization. Thus, TIPO considers RV’s cited trademarks and the contested trademark are applied for use in similar products.

4.      As RV’s cited trademarks are name of person that are not related to the quality or nature of the designated products, TIPO considers them distinctive. Moreover, based on the marketing materials, catalogues, and continuous media exposure between 2013~2020, including the local store opened in BELLAVITA in 2009, TIPO is convinced that RV’s trademarks should be well-known among the relevant public in the fields of footwear, fragrance, and skin care before the filing of the contested trademark.

 

Given that contested trademark is similar with RV’s cited trademarks, that both trademarks are applied for use in similar products, that RV’s cited trademarks are distinctive and have become famous among the relevant public, TIPO determines that the registration of “RV REESEY VIVIER” may cause confusion among the relevant public. Hence, the registration of the contested trademark is canceled based on Article 30.1.10 of Trademark Act accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RkI3WVJjMDdWZElRNnN0c2E5bFY5UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

JAGUAR prevailed in trademark opposition over “OWC Rover Pro”

On July 14, 2023, Taiwan’s IP Office (“TIPO”) sided with the luxury vehicle brand, Jaguar, finding its trademarks “ROVER”, “LAND ROVER”, and “RANGE ROVER” (Reg. No. 02019128, 02049069, and 02049080, see below) may be confused due to the registration of the contested trademark “OWC Rover Pro”, and canceled the contested trademark accordingly.

The contested trademark, “OWC Rover Pro” (Reg. No. 02140569, see below), was filed on September 18, 2020, and registered on May 16, 2021, designated for use in goods under class 9, including laptop racks, computer hardware, batteries and battery chargers, computer data storage devices, and computer software for backing up and storing computer data. Jaguar filed opposition on July 30, 2021, citing violation of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO found for Jaguar on July 14, 2023, determining that the contested trademark should be canceled based on Article 30.1.10 of Trademark Act:

 

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if:  1) such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and 2) 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 3) hence there exists a likelihood of confusion on relevant consumers.

2.    On similarity, TIPO considers the contested trademark “OWC Rover Pro” similar with Jaguar’s above cited trademarks for all of them share similar word “Rover/ROVER”. While there are additional words such as “LAND” and “RANGE” (in Jaguar’s cited trademarks) and “OWC” and “Pro” (in the contested trademark), “Rover/ROVER” should be the dominant part of these trademarks, and ordinary consumers may still find these trademarks visually similar with each other.

3.    As to the designated use of goods, TIPO notes that Jaguar’s trademarks are applied for use in products such as computers for vehicles, computers for self-driving vehicles, computer control equipment for providing driving and parking assistance, and computer software and hardware for automobiles. Although these products are not identical with those designated by the contested trademark, they are all related to computer hardware and software, and serve similar purposes and functions. Thus, TIPO considers that the contested trademark is applied for use in products that are similar to or associated with those designated by Jaguar’s above cited trademarks.

4.    Further, based on the records of trademark use, including sales of vehicles, advertising expenditures, marketing materials, and news reports, TIPO confirms that Jaguar’s “ROVER”, “LAND ROVER”, and “RANGE ROVER” are distinctive and should be known to the relevant public, especially in the field of automobile. Since consumers are more familiar with Jaguar’s trademarks, TIPO opines more favorable weights should be awarded to Jaguar’s trademarks than to the contested trademark.

5.    In view of the above, given that the contested trademark is similar with Jaguar’s cited trademarks, that the contested trademark is applied for use in similar products, that Jaguar’s trademarks are highly distinctive, and that consumers are more familiar with Jaguar’s trademarks, TIPO concludes that the registration of contested trademark might cause confusion among the relevant public. Hence, TIPO rules that the registration of “OWC Rover Pro” should be canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4N2J1QkZMZ0tvZ3YzS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true