TIPO’s Approval of The “marie claire美麗佳人” Mark Reversed. Matinform Triumphed in Appeal.

Matinform, the Taiwanese owner of the “美麗佳人” mark “defeated” Marie Claire, the French holder of the “marie claire美麗佳人” mark seeking the Taiwanese registration of the “美麗佳人” mark for use on cosmetic goods.

 

Marie Claire filed the application for registering its “marie claire美麗佳人” mark for cosmetic goods in 1999.  Matinform is the early bird in the case though.  It had obtained the trademark registration of its “美麗佳人” mark for use on cosmetic, slimming, and beauty treatment consulting services before Marie Claire filed the above application.  The Administrative Court thus upholds MOEA’s decision reversing TIPO’s approval of Marie Claire’s application holding that the two marks are similar with the consumer group and availability sites of the designated goods of both marks overlapped.

 

Previously TIPO approved Marie Claire’s application and Matinform opposed.  TIPO dismissed Matiform’s opposition and Matinform appealed.  The MOEA determined that consumer confusion exists and reversed TIPO’s approval of the “marie claire美麗佳人” mark.  Marie Claire subsequently initiated an administrative action against the MOEA.  As it turned out, the Taipei High Administrative Court and the Supreme Administrative Court both favor MOEA on the ground that (a) the “marie claire美麗佳人” mark has gained publicity through the circulation of the magazine, not with the distribution of cosmetic goods which are the designated goods of its associated mark but such publicity does not automatically translate the mark into a famous mark; and (b) Marie Claire’s application for registering the “marie claire美麗佳人” mark for use on cosmetic goods post-dates the registration of the “美麗佳人” mark owned by Matinform for use on the same class of goods.  Accordingly, MOEA’s decision reversing TIPO’s approval of the “marie claire美麗佳人” mark stands.  (2005.11)

/EMA