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