The Supreme Administrative Court Dismissed Lancôme’s Appeal Concerning Trademark Dispute with Deserve.

　Lancôme, the well-known French brand of cosmetics, initiated an administrative proceeding against Deserve International Trading Co., Ltd. (迪施雅國際公司) for the latter’s registration application for the mark “photogenic”, which is considered identical or similar to Lancôme’s marks, “PHOTOGENIC” and “PHOTOGENIQUE”, and thus deemed as plagiarism of Lancôme’s original trademarks.  

  The Supreme Administrative Court rendered a judgment denying Lancôme’s appeal by the reasoning that there is no evidence substantiating Deserve’s intentional plagiarism of Lancôme’s trademark through dealings with Lancôme though Lancôme has asserted that its trademarks have been approved for registration in countries around the world.  

  This trademark dispute has been gone on since September 1998 when Deserve applied for registration for the mark “photogenic” with TIPO (former Central Standards Bureau) and designated the mark to be used on its facial cleanser, facial mask, and essential oil products, and the registration application had been approved by TIPO.  

  Lancôme filed an opposition against the registered “photogenic” mark and claimed that Deserve violated the Trademark Law, while the TIPO did not affirm Lancôme’s opposition application.  For this reason, Lancôme instituted an administrative proceeding.  

  Lancôme asserted that Lancôme Paris is renowned worldwide for manufacturing various cosmetics and perfumes and the Lancôme-branded products have been well received by the consumers in abroad and Lancôme has also taken dominant position in Taiwan’s cosmetics industry; in addition, Lancôme Paris created the “PHOTOGENIC” and “PHOTOGENIQUE” marks in 1996, and has successively registered the two marks in the US, countries in Europe, and Australia since 1997.  

  IPO, however, overruled Lancôme’s assertions by holding that Lancôme failed to explicate how Deserve knew about Lancôme’s “PHOTOGENIC” and “PHOTOGENIQUE” marks and also failed to produce evidence proving Deserve’s use of the mark “photogenic” on its products and sale of such products in the markets inside and outside Taiwan; besides, “photogenic” is simply an English word which means “camera-friendly” in Chinese instead of an original word combination. (2006.3)

/CCS