Cartier lost its opposition against trademark “EPRVE”

CARTIER INTERNATIONAL AG (“Cartier”) lost in trademark opposition against CVIMALL INTERNATIONAL CORPORATION (“CVIMALL”), unable to persuade Taiwan’s IP Office (“TIPO”) that there exists likelihood of confusion between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks.

CVIMALL’s trademark, “EPVRE” (no. 02227225, see below), was filed on August 5, 2021, and granted on June 16, 2022, designated for use in products in class 3, including shampoo, conditioner, lotion, facial mask, facial cleanser, and skin care products. Cartier filed opposition on September 14, 2022, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

According to Cartier, the asserted trademark, “LES ÉPURES DE PARFUM” (no. 02049323, see below), was the brand of perfume Cartier introduced in 2020. Due to the success of the product, the brand “LES ÉPURES DE PARFUM” has become famous among relevant consumers. Given that “LES” and “DE” are definite articles and preposition in French, and that “PARFUM” means “perfume” in French, Cartier argued that the most distinctive and dominant element in Cartier’s asserted trademark should be “ÉPURES”. In this light, CVIMALL’s “EPVRE” is similar and may cause confusion among the relevant consumers.

On November 22, 2024, TIPO ruled in CVIMALL’s favor, finding that:

1.    The similarity between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” is low. TIPO did not consider that ordinary consumers would, as Cartier argued, necessarily consider “ÉPURES” the dominant portion, because French is not a language that Taiwan’s consumers are familiar with. Besides, CVIMALL’s trademark “EPVRE” has no ordinary meaning, and only constitutes one word. In this light, ordinary consumers are likely to recognize that there are visual, verbal, and conceptual differences between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks.

2.    Although TIPO recognized that both Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” covered similar product category, TIPO found evidence submitted by both parties could not show which trademark is more famous or recognizable among the relevant consumers. On the side of Cartier, TIPO found some of the evidence either lacked critical date or missed Cartier’s “LES ÉPURES DE PARFUM”, which was insufficient to support a finding of well-known status. On the side of CVIMALL, TIPO found it has submitted evidence showing its actual use of “EPVRE” on its skin care products, including webpages on Yahoo, PChome, Shopee, Instagram, YouTube, and CVIMALL’s official websites. As such, TIPO concluded that both trademarks have been used on the relevant products, and there is no clear evidence indicating Cartier’s “LES ÉPURES DE PARFUM” is more distinctive or popular among the relevant consumers.

3.    Lastly, TIPO noted there was no evidence of actual confusion submitted by the parties.

In view of the above, given the low degree of similarity, the lack of evidence proving Cartier’s “LES ÉPURES DE PARFUM” well-known status, the facts that CVIMALL’s trademark is distinctive, and that there is no evidence showing actual confusion, TIPO determined that there should be no likelihood of confusion between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks. Cartier’s opposition was denied by the TIPO accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZW9UeVREMEh6U014VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Chanel wins opposition for its iconic “COCO” trademark

On November 22, 2024, Taiwan’s IP Office (“TIPO”) canceled a device trademark that was found too similar to Chanel’s renowned “COCO” trademarks (No. 00102776, 00438289, and 01781763, see below).

 

The contested trademark (no. 02346785, see below), was a monogram design created by COCODOR TAIWAN CO., LTD (“Cocodor”). Cocodor’s application was filed on June 16, 2023, and granted on January 1, 2024, covering products in Class 3, including perfumes, essential oils, lotions, fragrances, hand creams, skin care products, shampoo, conditioner, shower gel, etc. Chanel filed opposition on April 1, 2024, alleging violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

TIPO ruled in Chanel’s favor on November 22, 2024 based on 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: 1) being identical with or similar to another person’s registered trademark or earlier filed trademark; 2) 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 3) hence there exists a likelihood of confusion on relevant consumers.

2.    Here, TIPO observed that the Cocodor’s trademark featured a 3X3 matrix of the capital letters “C” and “O”, which are the same letters that form Chanel’s “COCO” trademark. Although the contested trademark forms the visual impression of a monogram, TIPO considered that monogram designs are quite common in the fashion industry. As such, ordinary consumers may still perceive visual and conceptual similarity between the two trademarks.

3.    As to the nature and similarity of the designated products, TIPO noted that both Cocodor’s and Chanel’s trademarks cover products that pertain to personal beauty, hygiene, and fragrance, which are similar to each other. Ordinary consumers tend to find that these products serve comparable functions or purposes, or are distributed through overlapping sales channels.

4.    Turning to distinctiveness and consumers’ familiarity, TIPO found Chanel’s evidence, including records of trademark registration, advertising materials, and favorable rulings by TIPO and Taiwanese court, sufficient to prove that “COCO” as a trademark has been well recognized by Taiwan’s consumers based on Chanel’s continuous marketing and use. To the contrary, Cocodor did not submit concrete evidence to show its use of the contested trademark. The lack of supporting evidence from Cocodor strengthened TIPO’s findings in Chanel’s favor.

5.    In view of the similarity between the contested trademark and Chanel’s “COCO”, the overlap of designated products, and the facts that Chanel’s “COCO” is highly distinctive and more recognizable among the consumers, TIPO concluded that registration of the contested trademark may raise confusion with Chanel’s “COCO” trademark among the relevant consumers. Hence, the registration of Cocodor’s trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MFY0a2lyMmZhUTczS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Monster Energy’s trademark opposition for its M claw design fell short

On August 29, 2023, Monster Energy Company (“MEC”) filed trademark opposition against trademark No. 02299405 (the ‘405 trademark), contending that ‘405 trademark should be canceled because of the similarity with MEC’s iconic M claw design trademark (No. 01713839, see below).

 

The contested trademark, i.e., ‘405 trademark (see below), was filed by Yi-Shen International Corp. (“Yi-Shen”) on August 19, 2022, and granted on June 1, 2023, designated for use in services under Class 43, including restaurant, foods, and beverages services. MEC’s opposition is mainly based on Articles 30.1.10 and 30.1.11 of Trademark Act.

 

On November 8, 2024, Taiwan’s IP Office (“TIPO”) ruled in Yi-Shen’s favor, reasoning that:

1.      The 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 consumer” (Article 30.1.10), or “being 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” (Article 30.1.11).

2.      The ‘405 trademark consisted of Chinese characters “川常獨要” and three flaming red stripes. Although MEC’s M claw trademark also features three irregular stripes, the visual appearance is similar to the letter “M”, which is visually different from the ‘405 trademark. As such, the similarity between MEC’s M claw design and Yi-Shen’s ‘405 trademark is low.

3.      The designated products of MEC’s M claw trademark cover various kinds of drinks and beverages, like tea, milk, and alcohol. These products may be sold and supplied via the services designated by Yi-Shen’s ‘405 trademark. Thus, the products covered by MEC’s trademark is associated with or related to the services covered by Yi-Shen’s ‘405 trademark.

4.      Further, Yi-Shen’s ‘405 trademark possesses sufficient distinctiveness, which could be recognized by the consumers and distinguishable from MEC’s M claw trademark.

5.      Although MEC contented that its M claw trademark is famous and may be diluted by the registration of Yi-Shen’s ‘405 trademark, the evidence submitted by MEC was unable to back the alleged well-known status. TIPO found the sales records and news reports provided by MEC, such as marketing materials and invoices, insufficient to show the market share of the branded products, and fail to demonstrate the M claw trademark is actually perceived and well-regarded among the relevant consumers.

6.      In view of the above, given the lack of similarity, the lack of evidence showing the well-known status of the M claw trademark, and the lack of actual confusion or harm to MEC’s reputation, TIPO found the registration of Yi-Shen’s ‘405 trademark does not violate Article 30.1.10 and 30.1.11 Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OTdldlYvYVl5S3VmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Tory Burch prevailed in trademark opposition for its iconic “TT” logo

River Light V, L.P. (“River Light”), the trademark registrant of “Tory Burch” in Taiwan, successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel a device trademark that is too similar to its iconic “TT” logo (See below).

 

The contested trademark, no. 02285492 (see below), was filed by Sachia Nail Ltd. (“Sachia”) on August 10, 2022, and granted on March 16, 2023, covering products under class 3, such as mouthwash, air fragrance, bath soap for pet, etc. River Light filed opposition on June 16, 2023, citing violation of Article 30.1.11 of Trademark Act.

On October 30, 2024, TIPO ruled for River Light, finding Sachia’s device 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 “being 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.      With regard to the well-known status of River Light’s “TT” icon, TIPO noted that based on records of trademark use, since as early as 2004, River Light has been using the “TT” design on its products, including handbags, apparels, and shoes. Through the continuous use of such logo, TIPO confirmed that the “TT” logo has already become well-known among the relevant consumers when Sachia filed application for the contested trademark.

3.      As to similarity, both trademarks featured two letters of “T” embedded in a circle. Although the colors of the letters and the direction at which the letters pointed in the contested trademark were arranged differently, TIPO considered such variations minor, and insufficient to make the contested trademark distinguishable from River Light’s above famous trademark.

4.      Further, due to River Light’s profound use of trademark, TIPO found the cited “TT” trademark has gained strong recognizability, and is highly distinctive among the relevant consumers. Besides, River Light has been cooperating with other brands like Shiseido in providing new products like sun screen lotion and perfume. These products are related to personal hygiene, deodorizing, and cleaning, which are similar to the products designated by Sachia’s contested trademark.

5.      In view of the above, given that River Light’s “TT” trademark has been well-known, that the contested trademark is highly similar with River Light’s famous trademark, that the “TT” trademark is highly distinctive and applied to products that are related to those designated by the contested trademark, TIPO concluded that the registration of the contested trademark may cause confusion with River Light’s cited trademark.

 

As such, the registration of Sachia’s contested trademark is canceled based on Article 30.1.11 of Trademark Act.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3dvTXRJZ2VLRlZBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true