On November 1, 2024, Taiwan’s IP Office (“TIPO”) ruled in the favor of prestigious fragrance brand Jo Malone, finding the contested trademark “JOMAL” should be canceled due to likelihood of confusion with Jo Malone’s iconic “Jo Malone” trademarks (Nos. 00915303, 00130444, 00153065, and 00153153; see below).
The contested trademark, “JOMAL” (No. 02252416; see below), was filed by Marian Biotechnology Co. Ltd. (“Marian”) on March 30, 2022, and granted on October 1, 2022, designated for use in goods in Class 3, including variety of cosmetics, body lotion, facial mask, eye cream, moisturizing lotion, skin care cream, body deodorant, cleansing lotion, etc. Jo Malone filed an opposition on December 29, 2022, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.
On
November 1, 2024, TIPO ruled in Jo Malone’s favor based on 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 “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.
Between
the contested trademark “JOMAL” and the cited “Jo Malone” trademarks, TIPO
found there exists medium degree of similarity. Specifically, both trademarks
consist of the same characters “J”, “O”, “M”, “A”, and “L” and start with the
same letters “JO”. TIPO opined that ordinary consumers would find Marian’s “JOMAL”
verbally and visually similar with Jo Malone’s cited trademarks.
3.
As
to the designated products, TIPO noted that Jo Malone’s cited trademarks were also
applied to relevant products such as body lotion, skin care cream, fragrance, hair
conditioner, cosmetics, etc. These products serve similar purposes and functions
to those designated under Marian’s “JOMAL” trademark, as both related to skin
care, body cleansing, and personal beauty.
4.
Further,
based on prior cases and trademark search records, TIPO found “Jo Malone” has
become well-known among the consumers in the fragrance and cosmetics industry.
TIPO determined that “Jo Malone” is highly distinctive, and relevant consumers
are more familiar with “Jo Malone” than “JOMAL”.
In
view of the above, given the medium degree of similarity, the relatedness
between the designated use of products, and the facts that “Jo Malone” is well-known
and more recognizable by the relevant consumers, TIPO concluded that the
registration of “JOMAL” may raise confusion among the consumers, and thus shall
be canceled according to Article 30.1.10 of Trademark Act.
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