On March 25, 2025, Taiwan’s IP Office (“TIPO”)
sided with Parfums Christian Dior (“Dior”), canceling the contested trademark “Diora”
due to the likelihood of confusion with Dior’s iconic brand “DIOR” (see below).
The contested trademark, “Diora” (no.
02336174, see below), was filed by U.S. winery Delicato Vineyards LLC (“Delicato”)
on April 14, 2023, and granted on November 16, 2023, designated for use on wine
products. Dior filed opposition on February 2, 2024, citing violation of
Article 30.1.11 of Trademark Act.
1.
Per Article 30.1.11 of Trademark
Act, a mark shall not be registered if such a mark is “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.
Regarding the fame of “DIOR”,
based on Dior’s ongoing sales records, marketing materials, press releases, local
news reports, social media campaigns, and prior supporting judicial and TIPO’s decisions,
TIPO agreed with Dior that by the filing date of the contested trademark, “DIOR”
had achieved well-known status among the relevant consumers in the cosmetic and
fragrance markets.
3.
As for similarity, TIPO noted that
the first four letters of the contested trademark are identical to “DIOR”, with
minor differences in terms of the word case, font size, and the additional ending
letter “a”. TIPO agreed with Dior that ordinary consumers would find “Diora”
visually and verbally similar to “DIOR”.
4.
Although “DIOR” is originated
from the name of Dior’s founder, TIPO noted that “DIOR” has obtained strong distinctiveness
among consumers via Dior’s continuous and profound use in its cosmetic and perfume
products. On the other hand, there was no evidence supporting the fame of or
consumer familiarity with Delicato’s “Diora”. As such, based on the submitted evidence,
TIPO opined that consumers should be more familiar with “DIOR”.
5.
Delicato argued that “Diora” is
designated for use in wine products, so its goods did not overlap with those
designated by “DIOR”. TIPO disagreed, elaborating that wine, cosmetics, and perfume
are not, as Delicato contended, entirely unrelated. For example, TIPO noted that
the leftover materials in the process of wine making, lees, are often used as
ingredients for manufacturing cosmetic products, because of its rich antioxidants and polyphenols. Similarly, perfume
has been commonly used in marketing and promoting wine products, such as wine pairing
and perfume bartending. As such, consumers may still find the wine product
designated by “Diora”, to a certain degree, related to Dior’s perfume and
cosmetic products.
6.
In
view of the above, given the distinctiveness and well-known status of “DIOR”,
the similarity between “DIOR” and “Diora”, the relatedness between the
designated products, and the strong recognition among the relevant consumers,
TIPO concluded that registration of Delicato’s “Diora” has violated Article
30.1.11 of Trademark Act. Hence, the contested trademark was canceled
accordingly.
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