CHANEL scores a win for its “CHANCE” trademark in opposition against “All Chance”

“CHANCE” (Reg. No. 00532971, see below) is a trademark filed and registered by CHANEL in Taiwan in as early as 1991, designated for use in fragrances, lotions, deodorant, and cosmetics. Over the years, “Chance” has gathered considerable popularity through CHANEL’s use on series of its perfume and cosmetic products.

On April 24, 2020, a Taiwan-based company “All Chance Co. Ltd.” filed trademark application for “All Chance” (Reg. No. 02105460, see below), which was granted on December 1, 2020, designated for use in numerous services under class 35, such as advertising concept development, online advertising design, advertising promotion, advertising agency, business research, marketing consultants, internet shopping, retail and wholesale of cosmetics, and retail and wholesale of maternity and infant products.

CHANEL filed opposition against “All Chance” on February 26, 2021, alleging that for the service “retail and wholesale of cosmetics”, the registration of the contested trademark violates Article 30.1.10 of Trademark Act.

 

On November 30, 2022, Taiwan’s IP Office (“TIPO”) sided with CHANEL, finding “All Chance” used for “retail and wholesale of cosmetics” would cause confusion with CHANEL’s cited trademark “CHANCE”:

 

1.    On similarity, TIPO holds that “All Chance” is conceptually and visually similar with “Chance”. The additional word “All” is not distinctive and would not be sufficient to make “All Chance” as a whole distinguishable from “CHANCE”. Ordinary consumers would still find “Chance” constitutes the dominant portion of the contested trademark.

2.    TIPO also notes that CHANEL’s “CHANCE” is applied for use in cosmetic products, and “All Chance” is used for retail and wholesale of cosmetics. Both the products and services pertain to beauty, body cleaning, personal hygiene, or similar functions. Thus, TIPO is of the view that ordinary consumers would consider the designated goods and services related to each other.

3.    On distinctiveness, TIPO opines that while “CHANCE” has ordinary meaning, it is still distinctive for it bears no relationship with the nature or function of the designated cosmetic products. Besides, due to CHANEL’s years of marketing and use, “CHANCE” has been quite popular, and the relevant consumers are more familiar with CHANEL’s “CHANCE”.

 

In view of the above, given the similarity between “CHANCE” and “All Chance”, the relatedness between the designated cosmetic products and the retail service, the distinctiveness of “CHANCE”, and the fact that consumers are more familiar with CHANEL’s cited trademark, TIPO finds registration of “All Chance” for service under “retail and wholesale of cosmetics” would cause confusion with CHANEL’s “CHANCE” among the relevant consumers.

 

As a result, TIPO rendered a determination in CHANEL’s favor.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4YnE2UUNMVDN5OWRYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true  

NFL prevailed over INNI in trademark opposition for Dallas Cowboys' Team Icon

On November 9, 2022, Taiwan’s IP Office (“TIPO”) cancelled trademark no. 02115134, a trademark filed and held by INNILINK creative Corporation, finding the cancelled trademark confusingly similar with the icon of the popular NFL team Dallas Cowboys.

 

The icon of the Dallas Cowboys is a trademark owned by NFL Properties LLC (“NFL”). Such trademark was registered by TIPO in as early as September 16, 1999 (Reg. No. 00868102, see below), designated for use in goods under class 25, such as socks, hats, etc.

The contested trademark  (see below) was filed by a company called INNILINK Creative Corporation (“INNI”) on August 10, 2020, and was granted for registration on January 16, 2021, designated for use in goods under class 25, including swimsuits, clothing, scarf, neckties, hats, gloves, etc.

NFL filed opposition against INNI on April 16, 2021, citing, among the others, violations of Article 30.1.10 of Trademark Act. TIPO sided with NFL on November 9, 2022, finding that:

 

1.    INNI’s contested trademark is similar with Dallas Cowboys’ team icon. Both trademarks present the visual impression of overlapping black and white stars. While INNI’s star contains more decorative symbols, such difference is minor. In its entirety, TIPO finds INNI’s contested trademark visually and conceptually similar with Dallas Cowboys’ star icon.

2.    TIPO also notes that both INNI’s contested trademark and Dallas Cowboys’ icon are applied for use in similar products. For example, INNI’s trademark is designated for use in apparel and clothing, and such products are usually used in conjunction with accessories like hats and gloves, which serve similar purpose for covering human body and keep warm. Moreover, these products are usually available through similar sales channels. Ordinary consumers, if seeing similar trademarks, may consider these products originated from the same supplier.

3.    Plus, TIPO is aware that Dallas Cowboys’ icon has been popular and enjoys wide recognition in the relevant market due to NFL’s continuous marketing and promoting. Such team icon is highly distinctive, and consumers are more familiar with the icon of the highly popular NFL team.

4.    Given that INNI’s trademark is similar with Dallas Cowboys’ icon, that both trademarks are applied for use in similar products, and that Dallas Cowboys’ icon is distinctive and more recognizable among consumers, TIPO concludes that registration of INNI’s star logo is likely to cause confusion with Dallas Cowboys’ icon among the relevant consumers. As such, INNI’s star logo is cancelled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c3laN1RISjB2Rjc2MktZTGVWNnVnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

LOUIS VUITTON prevailed over “LOVISM & LVS” in trademark opposition

On September 16, 2021, LOUIS VUITTON MALLETIER (“LOUIS VUITTON”) filed opposition against HERMOSE BIOTECH CO., LTD. (“HERMOSE”), contending that trademark registered by HERMOSE would cause confusion with LOUIS VUITTON’s famous LV logo (Reg. No. 01922370 and 01587780, see below).

 

The contested trademark, “LOVISM & LVS” (Reg. No. 02149554, see below), was filed for registration on August 18, 2020, and granted on June 16, 2021. The contested trademark was applied for use in goods under class 3 and class 21, including skin care products, cosmetics, lotion, lipstick, sunscreen lotion, facial cleanser, fragrances, wrinkle creams (class 3); and cosmetic sets, and perfume sprayers (class 21).

 

LOUIS VUITTON alleged that the registration of “LOVISM & LVS” would cause confusion with its famous LV logos, thereby violating Article 30.1.10 of Trademark Act. On October 20, 2022, Taiwan’s IP Office (“TIPO”) agreed with LOUIS VUITTON, finding that:

 

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.      As both “LV” and “LOVISM & LVS” demonstrate similar combination of letters “L” and “V”, and “LVS” constitutes the major part of the contested “LOVISM & LVS” trademark, TIPO opines that HERMOSE’s contested trademark is visually and verbally similar with LOUIS VUITTON’s “LV” logo.

3.      As to the designated goods, TIPO notes that both HERMOSE’s contested trademark and LOUIS VUITTON’s “LV” are designated for use in cosmetics and fragrance products, which serve similar function and are normally considered to be related to each other. Therefore, the contested trademark is applied for use in similar goods.

4.      Further, LOUIS VUITTON has submitted sufficient records, such as advertising materials, media exposures, TIPO’s prior determinations, etc., showing that its “LV” logo is not only considered as well-known by TIPO, but has also been used and marketed profoundly in Taiwan. Therefore, TIPO posits that LOUIS VUITTON’s “LV” is highly distinctive, and that consumers are more familiar with LOUIS VUITTON’s “LV” logo.

 

In view of the similarity between “LV” and “LOVISM & LVS”, the fact that the contested trademark is applied for use in similar goods, and that “LV” is highly distinctive and consumers are more familiar with LOUIS VUITTON’s “LV” logo, TIPO determines that the contested trademark is confusingly similar with LOUIS VUITTON’s “LV” logo.

 

As a result, the contested trademark is canceled by TIPO accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WnBuMnBzdmZ0MGlHSnQ5R2lWM0ladz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Hermès Scored A Win For Its Famous Bag Charm Horse Logo Before Taiwan’s IP Office

On September 30, 2022, Taiwan’s IP Office (“TIPO”) sided with Hermès International, finding registration of trademark no. 02140931 was based on intent to imitate the fashion giant’s famous bag charm horse logo (see below).

The challenged trademark, i.e., no. 02140931 (see below), was filed on July 24, 2020, and granted on May 16, 2021, designated for use in goods in class 18, including leather boxes, artificial leather, leather belts, tanned leather, holsters for springs, belts for roller skates, leather trims for furniture, leather furniture covers, leather tags, luggage tags, wallets, purses, backpacks, luggage, and suitcases. Hermès filed opposition on May 17, 2021, contending that the registration of no. 02140931 violates Article 30.1.12 of Trademark Act.

 

According to Article 30.1.12 of Trademark Act, a mark shall not be registered if such a mark is:

1) identical with or similar to another person’s earlier used trademark

2) to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, and

3) where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.

On September 30, 2022, TIPO sided with Hermès in its determination to cancel the registration of the contested trademark:

1.    Firstly, Hermès as a brand is well-known in products like leather bag and other fashion accessories. Based on evidence of trademark use, since at least in 2013, Hermès had introduced a bag charm featuring its iconic horse. Such unique leather accessory has gathered tremendous success and remained popular since then. For example, there has been continuous news coverage from the mainstream media, and Hermès’ subsequent development of bag charm series remained trendy topic of discussion on various social media networks. Before the filing date of the contested trademark, Hermès’ aforesaid horse bag charm has been used and become famous among the relevant consumers.

2.   Although the registrant of the contested trademark contended that Hermès’ bag charm is not a trademark, but a product only, TIPO disagreed. To the contrary, TIPO finds that the unique design of the shape and style of the horse icon is distinctive and eligible for trademark protection. Plus, considering that such icon has been granted trademark registrations in other jurisdictions like EU and Korea, TIPO is of the view that consumers will consider such bag charm distinctive and as a trademark.

3.    Turning to similarity, TIPO finds the contested trademark and Hermès’ bag charm icon similar in terms of their overall concept and visual appearance. While there are minor differences in the way the tails, eyes, and horse hooves are presented, such differences are not sufficient to make the contested trademark distinguishable from Hermès’ well-known icon.

4.    As to the designated use of goods, the contested trademark is applied for use in various kinds of leather products, which are highly similar with the products for which Hermès’ bag charm icon is applied.

5.    While there is no direct evidence showing the registrant filed trademark application based on intent to imitate Hermès’ well-known bag charm logo, TIPO notes that the registrant is also engaged in similar leather business, which suggested that the registrant is more capable of learning the news and trend in the market. In this light, the fact that the registrant specifically chose to register a trademark that is highly similar with Hermès’ famous icon for use in highly similar goods evinces that the registrant should know the existence of Hermès’ popular bag charm when filing application for the contested trademark. As a result, TIPO rules that application of the contested trademark was filed based on intent to imitate Hermès’ well-known icon.

In view of the above, TIPO concludes that the application of the contested trademark was filed with intent to imitate the already well-known horse shape bag charm that Hermès has been put in trademark use since at least in 2013. The contested trademark is thus cancelled based on Article 30.1.12 of Trademark Act accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dVlIODJFRDg5dXV6cHpFcWVTU1YwQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Chanel prevailed in opposition for its famous “N°5” trademark

On September 28, 2022, Taiwan’s IP Office (“TIPO”) sided with Chanel, cancelling a contested trademark in view of likelihood of confusion with Chanel’s famous brand “N°5” (Reg. No. 00053150 and 00054210, see below).

The contested trademark, “NO15” (Reg. No. 02133207, see below), was filed on October 28, 2020, and granted on April 16, 2021, designated for use in goods under class 3, including, among the others, nail polish, lotion, cosmetic, skin care product, mask, perfume, cosmetic hair oil, artificial fragrance, air fragrance, fragrance, skin care products, toners, skin care lotions, etc. Subsequently, Chanel filed opposition against the contested trademark on July 13, 2021, citing violation of Article 30.1.11 of Trademark Law.

In its determination, TIPO finds in favor of Chanel based on the following reasons:

1.    According to Article 30.1.11 of Trademark Law, a mark shall not be registered if such a mark is: 1) being identical with or similar to another person’s well-known trademark or mark, and 2) 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.    TIPO notes that “N°5” was registered as trademarks by Chanel in Taiwan in as early as 1972. Through Chanel’s continuous efforts in marketing and using, Chanel’s “N°5” has become a well-known perfume brand. In Taiwan, “N°5” has also been recognized as a famous trademark by TIPO in its prior determinations. Before the filing date of the contested trademark “NO15”, Chanel’s “N°5” has become well-known in the field of perfume products.

3.    As to similarity, TIPO takes the view that while the contour of the letter “O” presented in the contested “NO15” trademark features the shape of a bottle, such design is relatively smaller and placed at the upper side of the letter “N”. Thus, when being viewed in its entirety, the visual impression formed by the contested trademark would be “N°15”, which is similar with Chanel’s “N°5”.

4.    The goods designated by the contested trademark are also products related to beauty and personal care. TIPO posits that these products are related goods because they are cosmetic and may be used in conjunction with perfume. Therefore, TIPO considers “NO15” and “N°5” are used in similar products.   

5.    TIPO further notes that Chanel’s “N°5” is highly distinctive, and has been famous as a perfume brand for a very long time. Therefore, ordinary consumers are more familiar with Chanel’s “N°5”. In contrast, there is no evidence of use regarding the use of “NO15”.

 

In light of the similarity between “N°5” and “NO15”, the well-known status of Chanel’s “N°5”, the fact that “N°5” and “NO15” are used in similar goods, and consumers’ familiarity with the successful perfume brand, TIPO holds that registration of “NO15” may cause confusion with Chanel’s well-known “N°5”. Hence, the contested trademark is cancelled by TIPO accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4eFEyV2x4OUZkZENQdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

GIORGIO ARMANI successful in reversing the unfavorable determination made by Taiwan’s IP office as to its “AJ” trademark

On August 3, 2022, the Petition and Appeal Committee of Ministry of Economic Affair (“Appeal Committee”) entered decision in favor of GIORGIO ARMANI, finding there might be confusion with its “AJ” trademarks (Reg. No. 01766270 and 01768516, see below) due to registration of QMI INDUSTRIAL CO., LTD.’s (“QMI”) contested trademark.

 

QMI’s contested trademark, no. 02124952 (see below), was filed on September 17, 2020 and granted on March 1, 2021, designated for use in goods under class 25, such as suits, skirts, shorts, coats, capes, trousers, T-shirts, headbands, headscarves, neck scarves, hats, dress gloves, etc. GIORGIO ARMANI filed opposition on June 1, 2021, citing violation of Article 30.1.10 of Trademark Act. 

Taiwan’s IP Office (“TIPO”) denied GIORGIO ARMANI’s opposition, finding there is only low degree of similarity between QMI’s and GIORGIO ARMANI’s trademarks. GIORGIO ARMANI challenged TIPO’s finding in Appeal Committee.

In its determination, the Appeal Committee sides with GIORGIO ARMANI and holds the view that although there are other decorative elements presented in QMI’s contested trademark, such features are drawings and would be less likely to be distinctive from the perspective of ordinary consumers. As a result, consumers would still view “AJ” as the dominant portion of QMI’s trademark. Similarly, while there are additional artistic elements like arrows and icon of eagle embedded in GIORGIO ARMANI’s cited trademarks, the letters “AJ” still constitute the dominant portion and would be used by consumers to identify the source of the goods and services. Thus, the Appeal Committee opines QMI’s contested trademark is similar with GIORGIO ARMANI’s cited trademarks. TIPO’s determination finding there is merely low degree of similarity is erroneous.

Given that there is considerable similarity between QMI’s contested trademark and GIORGIO ARMANI’s cited trademarks, that both QMI’s and GIORGIO ARMANI’s trademarks are applied for use in similar apparel and clothing products, and that GIORGIO ARMANI’s trademarks are distinctive, the Appeal Committee vacated TIPO’s decision and remanded the case back to TIPO.

 

Source:

Appeal Committee’s determination:

https://pamsdmz.moea.gov.tw/pams-public/api/download/20221015_decisionDownload-A211103002_180000_685_AftcmlvBvW/

TIPO’s determination:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4S2puaE1mS1IrbEFJdkZvZWMzaWdrUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled trademark “CSI TAIWAN CRIME SCENE INVESTIGATION” over likelihood of confusion with the popular “CSI” TV drama

“CSI: CRIME SCENE INVESTIGATION”, sometimes referred to as “CSI”, is a popular American crime TV drama that was aired on CBS network in September of 2000, and has gained worldwide popularity since then. In Taiwan, the TV series is not only phenomenal, its title “CSI: CRIME SCENE INVESTIGATION” was also registered as trademark by DALTREY FUNDING LP (“Daltrey”), a CBS’s affiliate, in as early as 2004, and Daltrey has acquired series of trademark registrations for “CSI” over the years (Reg. No. 01091769, 02030444, and 02048892, see below, together referred to as “CSI”). 

The contested trademark, “CSI TAIWAN CRIME SCENE INVESTIGATION” (Reg. No. 02052756, see below), was filed on January 25, 2018, and granted on April 16, 2020, designated for use in goods under class 9, including devices like computer hardware, computer software, laboratory instruments, magnifying glasses, microscopes, telescopes, imaging and sound transmission equipment, spectrometers, chemical devices, chemical instruments, physical devices, physical instruments , observation instrument, etc. Daltrey filed opposition on July 16, 2020, citing violation of Article 30.1.11 of Trademark Law.

 

After reviewing Daltrey’s opposition and the responses of owner of the contested trademark, Taiwan’s IP Office (“TIPO”) sided with Daltrey on August 31, 2022, finding registration of the contested trademark would cause confusion with the famous CSI trademarks:

 

1)      Article 30.1.11 of Trademark Law provides that a trademark 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)      As to CSI’s status as being well-known, TIPO finds for Daltrey, considering the cited CSI trademarks have become well-known after continuous and profound marketing and promotion of the TV series, including the broadcasting on TV channel (AXN), the streaming via platform such as Netflix, and the mass media exposure over the years.

3)      TIPO also notes that both the contested trademark and the cited CSI trademarks present “CSI” and “Crime Scene Investigation”, which makes the contested trademark conceptually and visually similar with Daltrey’s famous trademarks.

4)      Although “Crime Scene Investigation” is descriptive, “CSI” is a combination of the initials of “Crime Scene Investigation”, and thus demonstrates considerable distinctiveness. Such unique combination of initials, when being used in products and services like DVD or drama production, could be distinctive.

5)      In addition to TV drama, the cited CSI trademarks have been used in diverse merchandise, such as books, games, etc. There is no doubt that consumers would be more familiar with Daltrey’s CSI trademarks than the contested trademark. Further, one popular theme of the successful TV series has been forensic investigation, which needs to use various kinds of observation instruments and lab tools. The use of these devices in the “CSI” TV series has formed strong impression among the consumers. When using the contested trademark on these devices, it is likely that consumers may be confused and misunderstand the origin or relationship of the services or products represented by these two trademarks.

 

In view of the well-known status of “CSI” trademarks, the similarity between the contested trademark and the cited CSI trademarks, consumer’s high familiarity with the CSI trademarks, and the fact that the contested trademark is used in related products, TIPO determines that the registration of the contested trademark may cause confusion with Daltrey’s famous “CSI” trademark. As such, the registration of “CSI TAIWAN CRIME SCENE INVESTIGATION” is canceled accordingly.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MUwzcXpWMkRTZi9iZkVlR2JhUzVWQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true