How well-known should a “well-knowntrademark” be? Should it be generally known by the common consumers or does itsuffice to be only generally known by the relevant consumers? The SupremeAdministrative Court finally made a decision in 111-Da-Zi No. 1 which agrees thatit is sufficient that the criteria of the well-known is “being generally knownby the relevant consumers.”

The question was triggered by aBritish woman (the applicant was later changed to another company) who wishedto apply for a trademark of “GIOVANNI VALENTINO” in Taiwan to be used onfabrics, upholstery or bedding products, bed cover, table cloth, etc., whichare provided in the list of products and services category 24. the IntellectualProperty Office of the Ministry of Economic Affairs (TIPO) approved thetrademark after examination.

The Italian company ValentinoS.p.A. thought that it has registered and obtained many “VALENTINO-related”trademarks in Taiwan. Their products are of excellent quality and have beenwidely reported in newspapers and magazines, and won numerous awards. Therewere even several judgments in Taiwan held that their trademark was awell-known trademark. If “GIOVANNI VALENTINO” is approved to be a trademark, itwould make the consumers unable to distinguish between “GIOVANNI VALENTINO” and“VALENTINO” and cause a likelihood of confusion to the public.

The legal dispute in this case was: Isthere a difference between the criteria of the well-known trademark refer to thefirst and latter parts of subparagraph 11, paragraph 1, Article 30 of theTrademark Act?

subparagraph 11, paragraph 1, Article 30 of the Trademark Actprovides that a trademark shall not be registered if it is “identical with orsimilar to another person’s well-known trademark or mark, and hence thereexists a likelihood of confusion on the relevant public” (first part ofsubparagraph 11) or “a likelihood of dilution of the distinctiveness or reputationof the said well-known trademark or mark” (latter part of subparagraph 11). Accordingly,with respect to the criteria of well-known provided in the latter part ofsubparagraph 11 for the “well-known trademark,” the Supreme AdministrativeCourt has different internal views on whether such trademark should be “generallyknown by the common consumers” or whether it is sufficient for the trademark tobe “generally known by the relevant consumers.”

Inthis case, in order to avoid having different legalinterpretations, the Supreme Administrative Court submitted the case to theGrand Chamber and asked for an answer to the question, “With respect to the‘well-known trademarks’ referred to the latter part of subparagraph 11,paragraph 1, Article 30 of the Trademark Act, should the criteria of the well-knownbe interpreted as surpassing the criteria of being generally known by relevantconsumers and reaching the criteria of being generally known by commonconsumers for such provision to apply?” The Grand Chamber finally made adecision in 111-Da-Zi No. 1, holding that there is no difference between the criteriaof well-known of a well-known trademark as referred in the first part andlatter part of Subparagraph 11. They should both be interpreted as “being generallyknown by its relevant businesses or consumers; there is no need to meet the criteriaof being generally known by common consumers.”

Sincethe decision of Supreme Administrative Court 111-Da-Zi No. 1, the criteria ofthe well-known of the “well-known trademark” as referred in the first andlatter parts of subparagraph 11, paragraph 1, Article 30 of the Trademark Actare the same. That is, as long as a trademark meets the criteria of “being generallyknown by its relevant businesses or consumers,” it is considered a “well-knowntrademark.”