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