ALIPO IP ATTORNEYS

Overview of the well-known trademark protection in Taiwan-case study

Regulations regarding well-known trademarks and their dilution

According to the Article of the current Act, “Other grounds for refusal of registration, being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.”.  

It can be learned that “a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark” from the following paragraph of the Article, there are two types to regulate the trademark dilution which are “a likelihood of dilution of the distinctiveness” and “a likelihood of dilution of the reputation”.  

Thus, while the market of the goods/services of the trademarks differs, besides the business interests are not obvious, it would not lead the consumers to think they are from the same source or relevant source. However, if the contested trademark is granted for registration, it may result a damage of the distinctiveness or reputation of the earlier trademark, this is the problem required salutation for the trademark dilution issue. Therefore, the provision on trademark dilution protection in the following paragraph of the Article should have much higher requirements on the degree of trademark fame than those in the preceding paragraph of the same paragraph. "

Therefore, we can learn the following paragraph of the Article concerning the provision of trademark dilution, it seems such protection not only cover the original designated goods or services, but also can extend to the goods or services not relative to the originals. Some examples of cases in practice are explained below.   
 

Case Study 1

Administrative Judgment No. 373 of the Supreme Administrative Court of the Year 2013[2]

Background 

Earlier trademark (plaintiff’s trademark)	Contested trademark (defendant’s trademark)
Class 30: coffee, tea, beverage, etc.	Registration No. 01450217 Class 35: Retailing and wholesaling of hardware; Retailing and wholesaling of construction materials

The defendant filed the trademark “UCC collection & device” in the Class 35 designating the goods “Retailing and wholesaling of hardware; Retailing and wholesaling of construction materials”. The Intellectual Property Office under the Ministry of Economic Affairs (hereinafter referred to as the “TIPO”) granted the trademark registration, and the plaintiff opposed the said trademark registration based on Article 23, paragraph 1, subparagraph 12 (hereinafter referred as “the old Article”) and 14 of the old Trademark Act (the current regulation is Article 30, paragraph 1, subparagraph 11 and 12. TIPO refused the opposition. The plaintiff appealed against the decision of TIPO. The appeal was dimissed, subsequently, the administrative lawsuit was also rejected, the plaintiff was dissatisfied and then filed an appeal against this case.   

1. Excerpts of the judgment (regarding the provision of the Article)
   It will turn out the weakness or dispersion of the association of the well-known trademarks regarding the source of specific goods or services, if using the same or similar trademarks or devices which are similar to other party’s well-known trademarks on different goods or services, thereby it will result a possibility of reducing the distinctiveness of the well-known trademarks. Under this situation, it applies the following paragraph of the old Article “a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark”. The aforesaid provision is still applicable even the contested trademark uses the goods that there is no association with the goods or services of the earlier well-known trademark. 
   TIPO stated the nature of goods and services between the two trademarks differs. In addition, there exists obvious difference and no common or relationship among the nature, purpose, producers, suppliers, relevant consumers, distribution channels, sale outlets, etc., for the two trademarks. So the relevant consumers can distinguish the original source of the two trademarks. However, in case the contested trademark gets registration, it may lead a damage on a distinctiveness of the earlier well-known trademark. This is the problem required to solve concerning the trademark dilution protection in the following paragraph of the old Article of the ACT.  
   TIPO stated the contested trademark and the earlier trademark use the goods or services which are without competition or similarity, besides, the contested trademark has the word element “UCC” and uses for retailing and wholesaling of hardware and construction materials, it would not weaken the distinctiveness of the trademark, however, such statements are not appropriate as well as not complying with the principle about trademark dilution. 
2. The Supreme Administrative Court believes the contested trademark designates the services for retailing and wholesaling of hardware and construction materials in the Class 35 and the earlier trademark is well-known for the products such as coffee and its beverage in the Class 30, although both marks have different natures, marketings without association, but it still applies for the following paragraph of the Article.  

Case Study 2

Administrative Judgment No. 21 of the Intellectual Property and Commercial Court of the Year 2022[3]

Background 

Earlier trademark (partial trademark for example) (plaintiff’s trademark)	Contested trademark (defendant’s trademark)
Goods for the Classes 3, 14, 18, and 25	Registration No. 01929238 Class 12: Automobiles; Automobile parts and components….

The defendant filed the trademark “GIOVANNI VALENTINO” in the Class 12 designating the goods “Automobiles; Automobile parts and components….”. TIPO granted the trademark registration, and the plaintiff opposed the said trademark registration based on the Article of the Act. TIPO refused the opposition. The plaintiff appealed against the decision of TIPO. The appeal was dismissed, subsequently, the administrative lawsuit was filed against this case.          

1. Excerpts of the judgment (regarding the provisions of the Article)
   An important factor to determine whether there is a likelihood weakness of the distinctiveness, is to consider the degree of similarity between the two trademarks relating to the goods or services designated or actually used, in particular, the scopes of the specific goods or services designated or actually used by the well-known trademarks. If there does not exist conflict of the business interests among the goods or services designated or actually used and are entirely unrelated, the contested trademark uses for another goods or services which is similar to the well-known trademark, that will not weaken the degree and relationship of the well-known trademark about the goods or services designated or actually used, by this case, it is allowed the contested trademark to co-exist.  
2. There is no conflict of business interests and association between the contested trademark using the designated goods such as “Automobiles; Automobile parts and components….” in the Class 12 and the earlier trademark famous for clothing, bags, perfumes and precious metals. Thus, the Intellectual Property and Commercial Court determined that the contested trademark did not breach the provision of the following paragraph of the Article of the Trademark Act.

Conclusion 

It seems to conduct a broader protection in relation to the well-known trademarks rights and to extend protection to different classes of the goods or services, in addition to the goods or services originally designed, based on the Article in the earlier practice. Yet, it seems to undertake narrower identification regarding the well-known trademarks rights if there does not exist conflict of business interests and relationship relative to the goods or services designated by the contested trademark and actually used by the well-known trademarks, such the Article does not apply to the contested trademark to breach the Trademark Act in the recent practice. However, it remains to be observed how it will develop thereafter.