CHANEL successful in trademark opposition against “COCODOR”

On August 30, 2024, French fashion giant Chanel successfully canceled the disputed trademark “COCODOR” by convincing Taiwan’s IP Office (“TIPO”) that such trademark may cause confusion with Chanel’s famous “COCO” trademarks (no. 00102776, no. 00438289, and no. 01781763, see below).

The disputed trademark, “COCODOR” (no. 02346784, see below), was filed by COCODOR TAIWAN CO., LTD on June 16, 2023, and granted on January 1, 2024, designated for use in goods under class 3, including perfume, fragrance, essential oil, lotion, hand cream, skin care products, shampoo, conditioner, shower gel, etc. Chanel filed opposition on April 1, 2024, alleging that registration of “COCODOR” violates Article 30.1.10 and Article 30.1.11 of Trademark Act.

TIPO sided with Chanel on ground of Article 30.1.10 of Trademark Act:

1.      Article 30.1.10 of Trademark Act 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”.

2.      When examining the disputed trademark “COCODOR”, TIPO notes that such a mark starts with similar letters “COCO”, which makes it verbally and visually similar with Chanel’s cited trademarks “COCO”. Ordinary consumers will find “COCO” constitute the dominant portion of both trademarks, and are more inclined to find them similar with each other.

3.      TIPO notes that the disputed trademark is designated for use in products like perfume, skin cleansing, or skin care. The function, nature, or purpose of these products are highly similar with or identical to those of Chanel’s cited trademarks. They both help clean human body, or improve personal beauty. As such, the products designated by “COCODOR” are similar with those designated by Chanel’s “COCO”.

4.      Further, based on evidence of trademark use, TIPO finds Chanel’s “COCO” trademarks have been well known among the consumers in the fields of perfume, cosmetics, fashionable apparels, leathers, etc. In other words, Chanel’s cited “COCO” trademarks are highly recognizable, and consumers are more familiar with Chanel’s “COCO” than the disputed “COCODOR”.

5.      In view of the above, given the visual and verbal similarity between “COCO” and “COCODOR”, the similarity between the designated products, the facts that the cited “COCO” trademarks are well-known and have established profound familiarity among the relevant consumers, TIPO determines that registration of “COCODOR” for use in the designated products may raise confusion with Chanel’s famous “COCO” trademarks.     

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bkpQOVNQK1ZMeG03Q3pKSnREcU83Zz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true