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.
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