ALEXANDRE ZOUARI is a famous French hair designer in the world of hair styling. His clients include Cala Bruni - the former first lady of France, Elizabeth Taylor, Shirley Bassey and Sophia Loren, etc. Back in 1987, ALEXANDRE ZOUAR was invited by Japanese cosmetics company SHISEIDO Co, Ltd. and co-founded the “ALEXANDRE ZOUARI-Beauty Institute” in Paris, which was reputed as the world’s most luxurious beauty and hairstyling salon, and opened 16 branch stores in Japan. The hair designer then ventured to design jewelry, 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 Hermes particularly like to work with ALEXANDRE ZOUARI to create their seasonal fashion styles.
In 2008, the product line of “ALEXANDRE ZOUARI” was introduced in Asia and had 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. Last year, a mark “AZOUARI阿祖啦” was found registered in Class 3 for cosmetics and beauty creams related goods, as well as Class 35 for wholesale and retail of cosmetic goods. While the Latin-spelling portion of the mark “AZOUARI” can be suspiciously connected to Mr. ZOUARI by taking a form of “initial plus surname,” the Chinese characters “阿祖啦” suggesting that the mark should be pronounced as “A Zou La” in Taiwanese dialect, which shares a homophonic sound with “A. ZOUARI.” What more is that the term “阿祖啦” possesses a sarcastic and funny connotation of “great-grandparent” in the local dialect. The connotation of the nickname certainly degrades the luxury and stylish image of the high end brand name ALEXANDRE ZOUARI. Fortunately, ALEXANDRE ZOUARI filed a trademark opposition against the registration of the nickname in time.
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:
- The Latin-spelling portion “AZOUARI” is highly similar to the opposing trademark not only in the appearance and pronunciation but also in the given impression to the relevant consumers.
- The designated goods of the opposed mark “AZOUARI阿祖啦” 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”.
- The opposing marks have become well-known in Asia and are recognized 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阿祖啦” not only dilutes the fame and reputation of the opposing marks but also causes confusion among the relevant public that there are connection or association between these two mark owners.
In agreement with the afore-mentioned claims, the Taiwan Intellectual Property Office (TIPO) further comments 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 recognize the fame of the opposing mark, a favorable decision on the opposition from TIPO was issued 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.