Esteemed designer given local-language nickname
Zouari then ventured into the design of jewellery, sunglasses, scarves and hair accessories. He launched his first line of luxury hair accessories in 2008 and also stepped into the publishing industry in the same year. World-renowned fashion brands such as Valentino, Chanel and Hermès particularly like to work with Zouari to create their seasonal fashion styles.
Designer nicknamed ‘great-grandparent’
In 2008, the Alexandre Zouari product line was introduced in Asia and soon became well accepted by Asian celebrities; the designer’s name had obtained a trademark registration in Classes 3, 9, 14, 18, 25, 26 and 44. In 2013, a mark ‘Azouari’ was registered in Class 3 by another applicant for products related to cosmetics and beauty creams, as well as in Class 35 for wholesale and retail cosmetic goods.
While the ‘Azouari’ half of the mark (the section in Latin characters) can be connected to Zouari by putting together his initial and surname, the Chinese characters suggest that the mark should be pronounced ‘A Zou La’ in the Taiwanese dialect. That shares a homophonic sound with ‘A. Zouari’. However, the term also possesses the sarcastic and funny connotation of ‘great-grandparent’ in the local dialect. The connotations of that nickname certainly degrade the luxury and stylish image of the high-end brand name Alexandre Zouari.
However, Zouari filed a trademark opposition against the registration of the nickname in time.
Reasons for the opposition
Relying upon Articles 30-1-10 and 30-1-11 of the Trademark Act, which stipulate that a trademark shall be rejected if (1) the proposed trademark is identical or similar to a registered trademark or a proposed trademark of a preceding application that is designated for use on identical or similar goods or services thereof and hence likely to confuse the relevant consumers; or (2) the proposed trademark is identical or similar to another person’s well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark, the opponent claimed that:
1. The Latin-character portion ‘Azouari’ is highly similar to the opposing trademark not only in its appearance and pronunciation but also in the impression it gives to the relevant consumers.
2. The designated goods of the opposed mark ‘Azouari’ are identical or related to the designated cosmetics goods in Class 3, as well as to the beauty care services in Class 44, of the opposing mark ‘Alexandre Zouari’.
3. The opposing marks have become well-known in Asia and were recognised in Taiwan by the relevant consumers and fashion businesses before the filing date of the opposed mark.
Therefore, the opponent deems that the registration of ‘Azouari’ not only dilutes the fame and reputation of the opposing marks but also causes confusion among the relevant public that there is a connection or association between these two trademark owners.
The decision
In agreement with the aforementioned claims, the Taiwan Intellectual Property Office (TIPO) commented that the opposing mark bears a high distinctiveness because (1) Zouari is a surname not commonly known to the local people; (2) only the opposed and the opposing marks shared ‘Zouari’ as a part of the marks in TIPO’s trademark registration database; and (3) the opposing mark is the name of the opponent, which is highly distinctive for consumers to refer to as an indication of origin of cosmetic products or beauty salon services.
Although TIPO did not specifically recognise the fame of the opposing mark, a favourable decision on the opposition was issued from TIPO on March 7, 2014, holding that the registration of the opposed trademark violated Article 30-1-10 of the Trademark Act and should therefore be cancelled accordingly.
Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw
