Withrespect to the question of how “well-known” a well-known trademark should be,  the criteria should be generally known by thecommon consumers or does it suffice to be only generally known by the relevantconsumers, the Supreme Administrative Court turned the question to the GrandChamber in October last year, and the Grand Chamber gave an answer lately.

Thequestion was triggered by a trademark application by a British woman  who wished to apply for a trademark of “GIOVANNIVALENTINO”in Taiwan to be used on the products of fabrics, upholstery or beddingproducts, bed cover, table cloth, etc., which are provided in the list ofproducts and services category 24. Later, the applicant was changed to anothercompany. The Intellectual Property Office of the Ministry of Economic Affairs(TIPO) approved the trademark after examination.

TheItalian company Valentino S.p.A. objected to TIPO’s approval of such trademark.It holds that it has registered and obtained many “VALENTINO-related”trademarks. The relevant products such as clothing, hats, belts, bags, etc. aredesigned by the renowned designer Valentino Garavani. Such products are popularwith celebrities around the world and widely reported in newspaper andmagazines, winning numerous awards. As such, “VALENTINO” has become awell-known trademark. If “GIOVANNI VALENTINO” is approved to be a trademark, itwould make the consumers unable to distinguish whether the well-known trademark“VALENTINO” is owned by the Italian company Valentino S.p.A., and would dilutethe distinctiveness or reputation of the well-known trademark.

Subparagraph11, Paragraph 1, Article 30 of the Trademark Act provides that a trademarkshall not be registered if it is “identical with or similar to another person’swell-known trademark or mark, and hence there exists a likelihood of confusionon the relevant public” (first part of subparagraph 11) or “a likelihood ofdilution of the distinctiveness or reputation ofthe said well-known trademark or mark” (latter part of subparagraph 11).However, with respect to the criteria of well-known providedin the latter part of subparagraph 11 for the “well-known trademark,” theSupreme Administrative Court has different internal views on whether suchtrademark should be “generally known by the common consumers” or whether it issufficient for the trademark to be “generally known by the relevant consumers.”

Thosewho hold that well-known trademarks referred to the latter part of Subparagraph11 should meet the criteria of  “generallyknown by common consumers” think that the first part of Subparagraph 11 ismeant to prevent relevant public from being confused with the source of thegoods or services; the object of protection is the relevant consumers, i.e., theconsumers of the goods or services for which the trademark was used. However,the latter part of Subparagraph 11 is meant to prevent the distinctiveness orreputation of the well-known trademark from being diluted in the subjectiverecognition of common consumers; the object of protection is the well-knowntrademark, and such protection is not limited to the goods or services forwhich the trademark is used. The object and scope of protection of the two aredifferent. If a trademark is only well-known among the relevant consumers of acertain type of goods and services, and is not well-known among other consumersof different types of goods and services, it should not obtain monopolistic orexclusive right among such different types of goods and services or else itwill result in unfair competition in the market.

Thosewho hold that well-known trademarks referred to the latter part of Subparagraph11 does not need to meet the criteria of  “generally known by common consumers” thinkthat the provisions of the Trademark Act do not divide well-known trademarksinto the two categories of “well-known by common consumers” and “well-known byrelevant consumers,” and the legislative reasons do not elevate the criteria ofwell-known referred to the latter part of Subparagraph 11 to “generally knownby common consumers.” In addition, although the Examination Guidelines forWell-known Trademarks does mention that the criteria of well-known for thelatter part of Subparagraph 11 should be higher than that for the first part ofSubparagraph 11, i.e., if a trademark is generally known by the commonconsumers, it is more likely that it would meet the condition in the latterpart of Subparagraph 11. But, it does not require that the well-knowntrademarks referred to the latter part of Subparagraph 11 need to reach thelevel of being generally known among common consumers.

Inthis “VALENTINO” case, Valentino S.p.A. fought from objections, complaints, allthe way to the Supreme Administrative Court. In order to avoid having differentlegal interpretations, the Supreme Administrative Court submitted the case tothe Grand Chamber and asked for an answer to the question, “With respect to the‘well-known trademarks’ referred to the latter part of Subparagraph11, paragraph 1, Article 30 of the Trademark Act, should the criteria ofthe well-known be interpreted as surpassing the criteria of being generally knownby relevant consumers and reaching the criteria of being generally known bycommon consumers for such provision to apply?” The Grand Chamber finally made adecision on March 17, 2023, 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 relevant businesses or consumers; there is no need to meet the criteriaof being generally known by common consumers.”

This article was published in the Expert’sCommentary Column of the Commercial Times. https://view.ctee.com.tw/tax/49416.html