Oral Care Giant Colgate Palmolive Successfully Fends Off Trademark Opposition Over Its “COLGATE KEEP”

On March 15, 2024, Taiwan’s IP Office (“TIPO”) rendered a determination in the favor of Colgate Palmolive Company (“Colgate”), finding Colgate’s registered trademark “COLGATE KEEP” (Reg. No. 02249801, see below ) would not cause confusion with the asserted trademark “keep keep”.

Colgate’s “COLGATE KEEP” was filed on January 18, 2022, and granted on September 16, 2022, designated for use in products like toothbrush. MEI CHI Enterprise Co. Ltd. (“MEI-CHI”), the registrant of the trademark “keep keep” (Reg. No. 01590217, see below), filed opposition against Colgate on November 29, 2022 , contending that registration of “COLGATE KEEP” will cause confusion with its “keep keep”, and thus has violated Article 30.1.10 of Trademark Act.

 TIPO sided with Colgate on March 15, 2024, finding that:

1.        Although both “COLGATE KEEP” and “keep keep” contain the same word “keep”, the initial word “COLGATE” in “COLGATE KEEP”, in TIPO’s opinion, carries specific weight. TIPO also notes that “COLGATE” has established great recognizability among the relevant consumers via Colgate’s longtime use and marketing, including series brands like “COLGATE ACTIBRUSH”, “COLGATE JUNIOR”, “COLGATE PRECISION”, etc. In contrast, TIPO notes that there are other registered trademarks ending with the word “keep” that are also used in similar personal hygiene or toothbrushes products. That is to say, in the relevant product field, consumers would pay more attention to the initial word “COLGATE”, and should be able to distinguish “COLGATE KEEP” from “keep keep” despite of the similarity over “keep”. As such, the overall similarity between “COLGATE KEEP” and “keep keep” should be low.

2.        TIPO finds both “COLGATE KEEP” and “keep keep” distinctive, because both trademarks are not related to the function or nature of the goods in which they are used. Further, TIPO notes that Colgate’s “COLGATE KEEP” is applied for use in toothbrush, which is identical to product that is designated by MEI CHI’s “keep keep”. Colgate’s “COLGATE KEEP” and MEI CHI’s “keep keep” are applied for use for the same product. The degree of similarity over the designated product is high.

3.        Even though MEI CHI has shown the distinctiveness of its “keep keep”, and the degree of similarity between the designated products, TIPO opines these factors are not enough to establish likelihood of confusion in light of the low degree of similarity between “COLGATE KEEP” and “keep keep”. Besides, there is no evidence of actual confusion. TIPO therefore concludes that consumers should be able to discern “COLGATE KEEP” and “keep keep”, and will not confuse MEI CHI’s “keep keep” with Colgate’s “COLGATE KEEP”.

Based on the reasons above, MEI CHI’s trademark opposition against Colgate is denied accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bUt1Yjg4UTBBVzJQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true