DIOR prevailed in trademark opposition against “ADORER”

PARFUMS CHRISTIAN DIOR (“DIOR”), the registrant of Taiwan trademark “J'ADORE” (Reg. no. 00832697, see below), successfully convinced Taiwan’s IP Office (“TIPO”) that the registration of trademark “ADORER” should be canceled in accordance with Article 30.1.10 of Trademark Act.

 

The contested trademark, “ADORER” (Reg. no. 02198512), was filed by UNIKID INTERNATIONAL CO., LTD. (“UNIKID”) on August 16, 2021, and granted on February 1, 2022, designated for use in goods under class 3, including cosmetic products such as massage oil, skin care cosmetic, herbal essence, aromatic essential oil, etc. DIOR filed opposition on April 28, 2022, citing, among the others, violation of Article 30.1.10 of Trademark Act.

 

On August 25, 2023, TIPO sided with DIOR, finding registration of “ADORER” may cause confusion among the relevant consumers:

 

1.      Article 30.1.10 of Trademark Act:

This provision 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.      Visual and verbal similarity:

In this case, TIPO first notes that both “ADORER” and “J'ADORE” contain “ADORE”, so that there is visual similarity between the two trademarks. While DIOR’s “J'ADORE” starts with “J'”, which is different from the first letter of UNIKID’s “ADORER”, TIPO considers the pronunciation of “J'ADORE” similar with that of “ADORER”. When pronouncing, the stress would be on the word “ADORE”. Therefore, TIPO determines that DIOR’s “J’ADORE” and UNIKID’s “ADORER” are visually and verbally similar with each other.

3.      Similarity of designated products:

TIPO finds UNIKID’s “ADORER” is designated for cosmetic products like massage oil, essential oil, etc., which are similar with products designated by DIOR’s “J'ADORE”. For example, aside from perfume and fragrance, DIOR’s “J’ADORE” is also applied for use in essential oil. As such, TIPO is of the view that UNIKID’s “ADORER” is applied for use in goods that are similar with or related to products designated by DIOR’s “J'ADORE”.

4.      Well-known status of “J'ADORE”:

TIPO further finds that DIOR has submitted sufficient evidence showing the well-known status of “J'ADORE”, including news report, magazines, advertising, and the records of winning FIFI AWARD of Fragrance Foundation. Although “ADORER” is distinctive when being used in cosmetic product, TIPO finds evidence submitted by UNIKID insufficient to show that its “ADORER” is also well-known so that consumers are able to distinguish “ADORER” from DIOR’s “J’ADORE”. Consumers are more familiar with DIOR’s “J’ADORE”.

5.      Conclusion:

Given that UNIKID’s “ADORER” is similar with DIOR’s “J’ADORE”, that “ADORER” is designated for use in similar cosmetic products, that DIOR’s “J’ADORE” is well-known and consumers are more familiar with “J’ADORE”, TIPO concludes that registration of “ADORER” may cause confusion with DIOR’s “J’ADORE”. Hence, the registration of “ADORER” is canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SW9kWjFJdU80U2tQa3lsaTJEcDZ6QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“ZARA” prevailed in trademark opposition against “ZORA”

INDUSTRIA DE DISENO TEXTIL, S.A. (“IDT”), the registrant of trademark no. 01595432 (ZARA), 01520397 (ZARA HOME), 01483363 (ZARA BASIC), and 01406674 (ZARA) (all see below), successfully contested the registration of trademark “ZORA” in opposition proceeding, convincing Taiwan’s IP Office (“TIPO”) that the contested trademark will cause confusion and should be canceled.

 

l   Background:

The contested trademark, “ZORA” (no. 02152721, see below), was filed by HON TU INTERNATIONAL. CO., LTD (“HTI”) on October 16, 2020, and granted on July 1, 2021, designating for use in goods and services under class 3 (e.g., facial cream, body lotion, skin care cream, cosmetics, etc.), class 5 (e.g., mineral nutritional supplements, protein nutritional supplements, vitamin supplements, etc.), and class 35 (e.g., retails service for cosmetics, food, and nutritional supplement).

IDT filed opposition on September 29, 2021, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. 

l   TIPO’s decision:

TIPO found in IDT’s favor on July 31, 2023, determining that registration of the contested trademark violates Article 30.1.10 of Trademark Act, which provides that a mark shall not be registered if such a mark is “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.”

l   Reasons held by TIPO:

1.    TIPO finds HTI’s “ZORA” similar with IDT’s above cited trademarks. Although there are other word elements, such as “nature”, “home”, and “basic” presented, such additional elements are all ordinary words that are not distinctive. Therefore, consumers would consider “ZORA” and “ZARA” the dominant portions, and find the two verbally and visually similar with each other.

2.    HTI argued that “ZORA” is applied for use in cosmetics, and nutritional supplements, and IDT’s “ZARA” is used on apparel product. The products represented by the contested trademark should be dissimilar with those by IDT’s cited trademarks. TIPO disagrees, and reasons that determination on similarity under Article 30.1.10 should be based on the specific class of product identified in the trademark registration, not on the product on which the trademark is actually applied. Here, TIPO finds IDT’s cited trademarks are also designated for use in similar cosmetic, nutritional, and personal hygiene products, including baby food, medical nutrition, perfume, cosmetics, shampoo, facial cream, etc. Based on the class of products designated by IDT’s trademark registration and those designated by HTI’s contested trademark, consumers would find similarity since both serve similar function or purpose.

3.    TIPO acknowledges that “ZORA” has been used in cosmetic products and has established certain degree of brand recognition among the consumers. However, TIPO also notes that “ZARA” is highly distinctive, and consumers are familiar with such brand. Evidence of trademark use submitted by HTI is not sufficient to prove that “ZORA” has been famous enough so that consumers could distinguish HTI’s “ZORA” from IDT’s “ZARA”.

4.    In light of the above, given that “ZORA” is highly similar with “ZARA”, that “ZORA” is designated for use in similar goods and services, that consumers are familiar with “ZARA”, and the fact that “ZARA” is highly distinctive, TIPO concludes that HTI’s contested trademark may cause confusion among the relevant consumers, and thus should be canceled according to Article 30.1.10 of Trademark Act.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUJMWStvUE5UNmFTa1YvMDdiTnpyUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true