On May 15, 2023, the Petitions and Appeals Committee of Taiwan's Ministry of Economic Affairs (hereafter “Committee”) overturned the determination made by Taiwan's Intellectual Property Office (hereafter “TIPO”), siding with CHI MEI CORPORATION (hereafter “CMC”) in its opposition against GUCCIO GUCCI S.P.A. (hereafter “GUCCI”) over GUCCI's registered “CHIME & Device” trademark (No. 02099179, hereafter “CHIME”) by finding GUCCI's “CHIME” confusingly similar with CMC's famous “CHIMEI” trademarks (no. 1259430 and no. 1259543, hereafter “CHIMEI”). TIPO's determination was therefore vacated and the Committee requested that TIPO handle the case on remand accordingly (See Ching-Su-Zi No. 11217300710).
The contested trademark, “CHIME”, was filed on July 12, 2019, and granted on November 1, 2020, designated for use in services under class 36 (including charity fundraising, money collection, financial research, fund investment, arrangement of construction project financing, etc.) and class 41 (including educational services, provision of training services, entertainment, holding sports and cultural events, galleries, school education, etc.). CMC filed an opposition on January 27, 2021, alleging that the registration of “CHIME” violates Article 30.1.10 and Article 30.1.11 of Trademark Act.
TIPO found in GUCCI's favor, finding that while CMC's “CHIMEI” is well-known and that both the contested trademark and CMC's “CHIMEI” are used in similar services, the similarity between the contested trademark and CMC's “CHIMEI” trademarks is low. Unlike “CHIMEI” which is a transliteration based on CMC's company name, “chime” is a word with ordinary meaning. Further, TIPO observed that in its entirety, aside from the word “chime”, there are other designs presented in GUCCI's contested trademark. As such, the contested trademark is verbally, conceptually, and visually dissimilar with CMC's aforesaid famous trademarks. Furthermore, TIPO noted that the relevant consumers are already familiar with both GUCCI's and CMC's trademarks, and should be able to distinguish the former from the latter. Thus, there should be no likelihood of confusion.
The Committee vacated TIPO's determination because the Committee found both GUCCI's “CHIME” and CMC's “CHIMEI” feature the word “CHIME”, with minor difference in fonts and that CMC's “CHIMEI” end with additional letter “I”. Ordinary consumers, upon seeing GUCCI's “CHIME”, may still come up with pronunciation that is similar with CMC's “CHIMEI.” Hence, GUCCI's “CHIME” should be similar with CMC's “CHIMEI”. Considering the facts that both GUCCI's “CHIME” and CMC's “CHIMEI” are used in similar services, that both trademarks demonstrate certain degree of distinctiveness, and that consumers have considerable familiarity with both trademarks, the Committee concluded that even if GUCCI's filing was based on good faith, there remains the likelihood that consumers may confuse GUCCI's “CHIME” with CMC's “CHIMEI”. As a result, the Committee found that GUCCI violated Article 30.1.10 of Trademark Act.
The Committee affirmed that CMC's “CHIMEI” is well-known in the fields of ABS materials and electronic products, and found that CMC has used such famous trademarks in diverse types of goods and services, including in CMC's CHIMEI Museum and CHIMEI Cultural Foundation, which are services related to those designated by GUCCI's contested trademark. In light of the similarity between GUCCI's and CMC's trademarks, the Committee opines that ordinary consumers indeed may be confused and misled. Thus, the Committee found that GUCCI also violated Article 30.1.11 of Trademark Act.
Based on the above, although GUCCI's contested trademark consists of word and other designs, such additional designs are not distinctive and cannot be pronounced by the consumers. Thus, consumers’ visual impression would still be “CHIME” after seeing GUCCI's contested trademark, which is the key reason why the Committee would consider GUCCI's contested trademark similar with CHIMEI's aforesaid famous trademarks. When determining similarity, one shall not only focus on the comparison of the totality of the marks, but also look for the feature that may constitute the dominant portion.