Cosmetics giant L’OREAL successful in opposition proceeding against ‘Joereal’ on ground of likelihood of confusion

On January 13, 2023, Taiwan’s IP Office (“TIPO”) found trademark “Joereal” should be canceled in view of likelihood of confusion with senior trademarks “L’OREAL” (Reg. No. 00293516, 00313008, 00321107, 00323205, and 02132673, together as “L’OREAL”, see below) held by the French beauty giant L'OREAL, S.A.

 

The canceled trademark, “Joereal” (Reg. No. 02156922, see below), was filed on January 22, 2021, and granted for registration on August 1, 2021. “Joereal” was applied for use in goods in class 3, including cosmetics, collagen preparations for cosmetic use, creams for whitening skin, masks, face creams, skin care products, skin care lotions, makeup removers, shampoos, hair care products, cleanser for human body, soap, mouthwash, etc. L'OREAL, S.A. filed opposition against “Joereal” on October 29, 2021, alleging violation of, among the others, Article 30.1.10 of Trademark Act.

 

TIPO sides with L'OREAL, S.A. in its determination of January 13, 2023:

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.      On similarity of trademark, TIPO holds the view that while “Joeoreal” is slightly different from “L’OREAL” in its composition of characters, the pronunciation of “Joereal” is similar with that of “L’OREAL”. TIPO agrees with L'OREAL, S.A. and finds there should be medium degree of similarity between “Joereal” and “L’OREAL”.

3.      As to the designated use of goods, TIPO finds that trademark “L’OREAL” is not only applied for use in various kinds of cosmetics such as perfume, lipstick, eyeshadow, eyeliner, etc., but also body cleansers including bath gel, lotion, body powder, shampoo, soap, conditioner, etc. As such, TIPO considers “Joereal” and “L’OREAL” are applied for use in similar goods. They serve similar or related functions, and are usually sold to consumers via similar channels. The degree of similarity is high.

4.      Based on the report of internet search result, trademark search report, and report of Wikipedia, TIPO finds the records submitted by L'OREAL, S.A. sufficient to prove that “L’OREAL” has been widely used on numerous makeup and cosmetics, and has established popularity and recognizability among the relevant consumers. In comparison, TIPO finds there is little record supporting the distinctiveness of “Joereal”. Hence, on the determination of distinctiveness, TIPO finds such factor tips to the favor of L'OREAL, S.A.

   

In view of the above, given that there is medium degree of similarity between “L’OREAL” and “Joereal”, that the designated products of “Joereal” are highly similar with and related to those designated by “L’OREAL”, and that “L’OREAL” is highly distinctive and more recognizable by the consumers, TIPO concludes that the registration of “Joereal” may cause confusion among the relevant consumers due to its similarity with “L’OREAL”. As a result, registration of “Joereal” is canceled accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cm1uYU5hallWUmV4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office canceled “Volover” in view of similarity with “VOLVO” in trademark opposition

VOLVO TRADEMARK HOLDING AB (“VTH”) successfully convinced Taiwan’s IP Office (“TIPO”) in its opposition against trademark “Volover”, having the contested trademark canceled due to likelihood of confusion with its famous “VOLVO” trademarks (e.g., Reg. No. 01789958 and 01293880, see below).

 

The contested trademark “Volover” (see below) was filed for registration on November 30, 2020, and was granted on August 1, 2021 (Reg. No. 02156832), designated for use in goods under class 3, including cosmetics, body cleanser, face cream, lotion, body cream, skin whitening cream, lotion, cleanser, sunscreen, face mask, body gel, moisturizer, massage cream, essential oil, wrinkle cream, nutritional cream, etc. VTH filed opposition on October 29, 2021, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On December 30, 2022, TIPO found for VTH, determining that the registration of the contested trademark should be canceled due to violating at least 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 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.    Here, TIPO firstly notes that the contested trademark “Volover” and VTH’s “VOLVO” both start with “V”, “O”, and “L”, followed by similar combination of letters “ov” and “VO” respectively. Considering the similar sequence and composition of these letters, TIPO opines “volover” and “VOLVO” are similar with each other.

3.    As to the status of “VOLVO”, after reviewing VTH’s supporting materials, such as market survey report, marketing material, and prior judicial finding made by Taiwan’s IP Court in 2013, TIPO is convinced that prior to the filing of the contested trademark in 2020, “VOLVO” as a trademark has been well-known in auto industry.

4.    Meanwhile, TIPO considers “VOLVO” highly distinctive, given that the meaning of such trademark is not related to the nature and function of product and service for which it is applied for use, and that “VOLVO” has been marketed and used by VTH for a very long time. In general, consumers are more familiar with “VOLVO”.

5.    Although the contested trademark is designated for use in cosmetic product, which is not the product field in which “VOLVO” enjoys its well-known status, TIPO finds “VOLVO” in fact has been put in use on diversified product lines, and VTH also acquired registration of “VOLVO” that is designated for use in products like perfume and fragrance. Thus, TIPO holds the view that the brand territory of “VOLVO” may expand to similar cosmetic product, and that consumers may be confused by registration of “Volover” due to its similarity with “VOLVO”.

 

Based on the reasoning above, considering that “Volover” is similar with “VOLVO”, that “VOLVO” is well-known and highly distinctive, and that consumers are more familiar with “VOLVO”, TIPO finds the registration of “Volover” is likely to caused confusion with VTH’s famous “VOLVO” trademark. Therefore, the contested trademark is canceled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bjhBT21aZDZlSVU0bEEvMDUreVhhUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Apple successfully canceled “HiTune” in view of similarity with its famous “iTunes” trademark

In a trademark opposition initiated by Apple Inc., Taiwan’s IP Office (“TIPO”) ruled in tech giant’s favor, finding the contested trademark “HiTune” confusingly similar with Apple’s famous “iTunes” trademarks (Reg. No. 01020430, 01716278, and 02076944, see below).

The contested trademark, “HiTune” (Reg. No. 02114569, see below), was filed for registration on August 18, 2020, and granted on January 16, 2021, designated for use in goods under class 9, including data processing equipment, random access memory, earphones, headphones, microphones, audio-video receivers, sound transmitters, battery chargers, cables, data readers, downloadable application software, sound recording apparatus, portable media players, tuning devices, network communication equipment, and wearable electronic devices. Apple filed opposition against the registration of “HiTune” on April 15, 2021, alleging violation of Article 30.1.10 and Article 30.1.11 of Trademark Act.

 

TIPO sided with the tech giant on November 28, 2022, finding:

1.    The contested trademark is similar with Apple’s cited “iTunes” trademarks. Although the initial letter of the contested trademark (i.e., “H”) is different from that of Apple’s cited trademarks (i.e., “i”), consumer’s overall visual impression of the contested trademark would still be “Tune”. Additionally, the pronunciation of “HiTune” is also similar with that of “iTunes”. TIPO therefore determines the contested trademark is verbally and visually similar with Apple’s cited trademarks.

2.    As to similarity of the designated goods, TIPO is of the view that Apple’s “iTunes” trademarks are applied for use in products like computer software, mobile phone, internet equipments, downloadable multimedia files, cpu, data processor, speaker, wearable device, etc., which are associated with the function of products designated by the contested trademark. For example, the designated applications and softwares of both trademarks could be used on computers and wearable devices. Hence, consumers may consider Apple’s “iTunes” and the contested “HiTune” are applied for use in similar products. 

3.    While TIPO recognizes that both Apple’s “iTunes” and the contested “HiTune” are distinctive in nature, TIPO, after reviewing the evidence of trademark use, finds there is no record that could support consumer’s familiarity with the contested trademark “HiTune”. In contrast, based on Apple’s supporting evidence, “iTunes” has become widely popular among the relevant public due to the success of Apple’s iPOD and iOS products. Therefore, Taiwan’s consumers are more familiar with Apple’s “iTunes” trademarks.

 

In view of the similarity between “HiTune” and “iTunes”, the similarity of the designated goods, the high distinctiveness of and consumer’s familiarity with  Apple’s “iTunes”, TIPO determines that the registration of “HiTune” may cause confusion with Apple’s “iTunes”. As such, registration of “HiTune” is canceled in accordance with Article 30.1.10 of Trademark Act.

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c2hmYVlUcG9tMHBYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

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