Fashion brand “CHOO” secured another win over PPB Studios’ “CHUU PPB STUDIOS”

On June 27, 2024, J. CHOO LIMITED (“JC”), the registrant of trademark no. 02341750, 01661633, 01888397, 01744963, and 02003379 (see below), prevailed in trademark opposition against PPB STUDIOS CO., LTD. (“PPB”), convincing Taiwan’s IP Office (“TIPO”) that PPB’s trademark “CHUU PPB STUDIOS” may cause confusion with JC’s above cited famous trademarks.

PPB’s contested trademark, “CHUU PPB STUDIOS” (no .02326032, see below), was filed on January 30, 2023, and granted on October 1, 2023, designated for use in services under class 35, such as information service for consumers to choose goods and services, online shopping, retail and wholesale service for clothing, accessories, and bags, etc. JC filed opposition on December 22, 2023, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sides with JC in its determination rendered on June 27, 2024:

1.      Per Article 30.1.10 of Trademark Act, 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.”

2.      The initial word of PPB’s contested trademark “CHUU PPB STUDIOS” is “CHUU”, which constitutes the dominant portion of said trademark. Ordinary consumers would find “CHUU” similar with JC’s “CHOO”, as both share same letters “C” and “H”, and similar pronunciation and visual appearance. While there are additional “PPB” and “STUDIOS” presented in PPB’s contested trademark, such elements are not sufficient to create distinguishable differences. In the entirety, consumers will still view “CHUU PPB STUDIOS” similar with JC’s “CHOO”. The degree of similarity should be medium.

3.      Although PPB’s contested trademark is designated for use in various services for retail and wholesale, TIPO notes that these services may be used for retail and wholesale of products that JC’s “CHOO” is applied for use, such as bags, gloves, hats, purses, apparel, etc. In other words, the designated services of PPB’s trademark are associated with the services or products designated by JC’s trademarks, because both serve similar or relevant functions for satisfying consumers’ needs for purchasing clothing, bags, or accessories.

4.      As to the comparison of distinctiveness and fame between JC’s and PPB’s trademarks, TIPO finds these factors titled to JC’s favor. JC’s “CHOO” is highly distinctive, and has achieved profound popularity and recognizability via JC’s marketing and use worldwide. To the contrary, PPB has submitted no evidence of use regarding its contested trademark. Thus, TIPO opines consumers are more familiar with JC’s “CHOO”.

5.      In light of the above, considering that there is medium degree of similarity between “CHUU PPB STUDIOS” and “CHOO”, that “CHUU PPB STUDIOS” is designated for use in services that are associated with goods or services designated by JC’s “CHOO”, and that JC’s “CHOO” is more famous with which consumers are more familiar, TIPO concludes that PPB’s “CHUU PPB STUDIOS” may cause confusion with JC’s “CHOO”.

Hence, TIPO canceled the registration of PPB’s contested trademark accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WXpqSVVmYUJzYkZWWTBFNmZHQzJSZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true