2024年5月25日 星期六

Chanel prevailed in opposition proceeding against trademark “CONSCIOUS GEOMETRY”

On April 30, 2024, Taiwan’s IP Office (“TIPO”) found for Chanel in its trademark opposition against “CONSCIOUS GEOMETRY”, concluding that registration of the contested trademark should be canceled in view of likelihood of confusion with Chanel’s well-known “CC Monogram” (Reg. no. 01849081, and 01655651, see below).

The contested trademark, “CONSCIOUS GEOMETRY” (Reg. no. 02260421, see below), was filed by Consciouseed Ltd. (“Consciouseed”) on March 30, 2022, and granted on November 1, 2022, designated for use in class 41, including services like educational services, training services, vocational services, hosting lectures, organizing cultural activities, etc. Chanel filed opposition on February 1, 2023, citing violations of Article 30.1.10 and Article 30.1.11 of Trademark Act.

TIPO sided with Chanel in its determination entered on April 30, 2024, finding the registration of the contested trademark violates Article 30.1.11 of Trademark Act :

1.      Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark”.

2.      Based on the voluminous supporting evidence submitted by Chanel, including market survey in 2015, coverages of prestigious magazines including Vogue and Bazaar throughout 2017 and 2019, TIPO’s findings in prior determinations, and news reports by numerous local medias, TIPO confirms that prior to Consciouseed’s application in 2022, Chanel’s “CC Monogram” has achieved well-known status in the fields of bags, apparel, cosmetics, etc.   

3.      In terms of similarity, TIPO notes that while Consciouseed’s trademark consists of two words “CONSCIOUS GEOMETRY”, the overlapping letters of “C” and “G” in the middle of the contested trademark should constitute the dominant portion. Although the overlapping of “G” and “C” is somewhat different from Chanel’s famous “CC monogram”, they both create similar visual impression formed by two overlapping curves with openings directing at the opposite direction. As such, the difference is minor. The overall visual appearance of the contested trademark is similar with Chanel’s famous monogram.

4.      TIPO also notes that the nature of designated services of Consciouseed’s contested trademark involves education and teaching, which is not identical to the product categories in which Chanel is famous. However, there is strong evidence showing Chanel has diversified its use of the CC monogram, including using the famous icon in activities that teach clothing style and share make-up tips with consumers. In this respect, TIPO considers Consciouseed’s contested trademark is applied for use in services that are related to those in which Chanel’s famous icon is used.

5.      In light of the above, given the well-known status of Chanel’s CC monogram, the similarity between Consciouseed’s contested trademark and Chanel’s famous CC monogram, the facts that Chanel’s “CC monogram” is more known by the consumers and used in diversified products and services, including services that are also educational in nature, TIPO considers there is likelihood of confusion caused by registration of Consciouseed’s contested trademark. As a result, TIPO determines that the registration of “CONSCIOUS GEOMETRY” should be canceled accordingly.

 

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZW9xSkUrcmFCQzdjUVpuWFpQTWpkQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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