French Chocolatier Valrhona Successfully Overcomes Trademark Refusal: “ÉQUATORIALE” and “equator” are NOT Confusingly Similar
Date:12 October 2022
【Volume 93】
Although Chinese is the most commonly used language in Taiwan, foreign languages are also widely used by local businesses in their trademarks. Therefore, foreign companies often face problems regarding similarity and confusion with earlier trademarks while applying for trademarks in Taiwan. Recently, the Taiwan Intellectual Property and Commercial Court (the IP Court) overruled the decisions issued by the Taiwan Intellectual Property Office (IPO) and the Petitions and Appeal Committee of the Taiwan Ministry of Economic Affairs (PAC) refusing the application for registration of the trademark “VALRHONA EQUATORIALE and device” filed by Valrhona. The IP Court pointed out that there is no likeliness of confusion between the chocolatier’s trademark and the earlier trademark “equator” owned by a local café (VALRHONA EQUATORIALE case, IP Court 2021 Xingshangsuzi No. 15 Judgment).
In this judgment, the IP Court’s opinions on both the similarity of the specimens and the likeliness of confusion are different from those of the IPO and the PAC. The decision is worthy of the attention from famous international companies planning their trademark strategy in Taiwan.
Case Fact
In October 2018, the famous French premium chocolate manufacturer “Valrhona” applied for registration of the trademark “VALRHONA EQUATORIALE and device” (“the contested trademark”, Appl. No. 107063816) designating goods in class 30, including cocoa and cocoa powder, chocolate, etc.
However, both the IPO and the PAC asserted that the contested trademark was similar with the registered trademark “equator and device” (“the earlier trademark”, Reg. No. 01523717). They indicated that “ÉQUATORIALE” and “equator” were highly similar in the perspective of appearance and concept. Thus, the application was refused.
Valrhona soon filed an administrative lawsuit with the IP Court to argue for the revocation of disposition and to request the registration of the contested trademark. Eventually, the aforesaid decisions were overruled by the IP court, and the IPO was requested to issue an approval decision.
The Contested Trademark and the Earlier Trademark
| The contested trademark | The earlier trademark |
|---|---|
|
（Appl. No. 107063816） |
（Reg. No. 01523717） |
| Designated goods / services | |
|---|---|
|
Class 30 cocoa and cocoa powder; chocolate and chocolate products, etc.
|
Class 30 coffee, coffee bean, coffee-based beverages, etc.
Class 43 coffee shop, cafés, etc. |
Opinions of the IP Court
- The trademarks are similar only to a limited degree
Although both trademarks begin with “EQUATOR”, meaning the circle of latitude dividing Earth into the Northern and Southern hemisphere, the contested trademark has the addition of “IALE” at the end of the word. Furthermore, the contested trademark is comprised of uppercase French letters while the earlier trademark is comprised of lowercase English letters.
Also, the contested trademark consists of three elements, i.e., “ÉQUATORIALE”, the device “
”, and the grey slash-lined background design, “
”. On the other hand, the descender of the second letter “q” in the earlier trademark is extended, curled and connected to the coffee-cup-shaped curved line image “
” at the top right corner. This composition makes the letters and the linear image elements in the earlier trademark a closely integrated and undividable whole. Thus, the overall style and appearance of these trademarks are apparently different. The resemblance of their pronunciation and concept merely results in a limited degree of similarity. - The chocolate products using the contested trademark are well known by the relevant consumers. Consequently, it is unlikely for consumers to confuse the contested trademark and the earlier trademark
The applicant of the contested trademark, Valrhona, is a chocolate manufacturer having a worldwide reputation, and the contested trademark is mainly used on the products produced and sold by the applicant itself. One of the elements of the specimen of the contested trademark “
” has been registered as trademarks in many countries by the applicant. Secondly, the applicant has many sale channels, and many confections in the market adopt these chocolate products as their ingredients. It is obvious that the contested trademark has already been broadly recognized by the relevant businesses or consumers in the chocolate product industry, and it is already well known by the relevant consumers accordingly.On the other hand, the trademark holder of the earlier trademark only owned a café named “Equator Coffee” in Taichung, Taiwan, selling relevant products of coffee. Since it does not have other sale channels or branches, its popularity is lower than the contested trademark. As a result, they are not directly relevant to the popular products sold by Valrhona.
Wisdom Suggested Strategies
It is often inevitable for foreign companies to run into conflict with local businesses while preparing their trademark application in Taiwan. In such circumstances, it is crucial to assess the similarity and the likelihood of confusion of the trademarks consisting of foreign languages.
Regarding the similarity between the specimens, in this judgment, the IP court further indicated that there are multiple differences, namely using French/English and using uppercase letters/lowercase letters, between the contested trademark and the earlier trademark. Additionally, the earlier trademark has a special graphic design for the letters in its specimen. These factors lead to the dissimilar visual impression between the trademarks. Although these trademarks have a similar composition, the IP Court established that they have a low degree of visual similarity. Summing up all the findings above, the IP court overturned the opinions of the IPO and the PAC and found that the two trademarks were not confusingly similar.
Regarding the determination of the likelihood of confusion, the IP Court indicated that Valrhona had submitted evidence of registrations in many countries and of its products being sold on various shopping websites. It reinforced the credibility of the high popularity of the chocolate products bearing the contested trademark in Taiwan. Contrastingly, the earlier trademark holder had only had a café in Taichung selling coffee related products. Considering factors including the limited degree of similarity between their specimen, the IP Court believed that Valrhona’s trademark will not cause likelihood of confusion among the relevant consumers.
It should be noted that similarity of specimens or goods/services does not necessarily lead to likelihood of confusion. Thus, even though the examiner issues an Office Action accusing obvious similarity with earlier trademarks, submitting evidence that how the trademark is actually used on designated goods/services can still favor the examination of confusion and overcome the reasons for refusal.
