Avon Lost the “SPOTLIGHT” Trademark Lawsuit.

Avon, the well-known direct sales company, introduced a new celebrity fragrance product for women called SPOTLIGHT with the actress of “Friends”, Courteney Cox as its spokesmodel.  However, TIPO did not approve of Avon’s application for registering its “SPOTLIGHT” mark for the perfume product because its “SPOTLIGHT” mark is similar to the “光點spotlight” mark used on hair care products.  Avon filed an administrative appeal but the appeal was then dismissed.

Avon defended its application that it is easy for consumers to differentiate the two trademarks in dispute and the products they represent respectively because its “SPOTLIGHT” mark is in all capital letters, while the English letters of “光點spotlight” mark are in small letters and “光點spotlight” mark contains two Chinese characters “光點”.

Also, Avon maintained that the two trademarks in dispute signify different categories of products.  Its “SPOTLIGHT” mark is used for perfume product, while “光點spotlight” mark is used on the products for hair designing, dying, cleaning, and caring.  More than that, Avon distributes its products in the form of direct sales as opposed to the products bearing “光點spotlight” mark that are commercially accessible in department stores and supermarkets, which means they have different sales channels.  As a brand well recognized by most consumers, Avon sought more protection and expected approval of its trademark registration application for its “SPOTLIGHT” mark.

Comparing the two trademarks in dispute, the judge of IP Court held that the two Chinese characters, “光點” of the “光點spotlight” mark is the Chinese translation of the word “spotlight”, and the two trademarks have the same literal meaning; that is, they share high level of similarity with only one difference in English letters (capital and small letters), which would mislead consumers to believe they are from the same source.  Moreover, the trademark registration of “光點spotlight” mark has been completed earlier than Avon’s “SPOTLIGHT” mark.  The IP Court thus decided against Avon.  (2010.11)

Source: IP Court docket number: (99) Xing-Shang-Su-Zi No. 108 [2010]
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