In the past, although the IP Office recognised the fame enjoyed by popular movies, such recognition did not render these titles to be famous marks by default. Nowadays, considering that the production companies of well-received movies or TV shows are apt to release many tie-in products and that a box office hit often promises high public awareness, the IP Office has made it clear in Article 4.7 of the Examination Guidelines on Distinctiveness of Trade Marks that "[t]he titles of works, including books, films, and dramas, shall be deemed to have acquired their distinctiveness if, after extensive exposure, they have implanted a vivid impression in the minds of consumers". On this score, the copyright owners or parties with the copyright owner's consent are entitled to register such titles as trade marks.
On November 6 2013, an application was filed for the mark 唐頓莊園 Downton Abbey in class 33 in respect of alcohol, wine and the like, and the application later matured into registration number 1643707. However, during the opposition period, Carnival Films (the production company of the British drama "Downton Abbey") filed an opposition against the registration, claiming that Downton Abbey/唐頓莊園 (the Chinese translation of Downton Abbey) is not only the title of a successful television series but also a famous mark owned by Carnival Films.
After a review of the case, the IP Office rendered a decision in favour of the opposer and the decision was upheld by the Board of Appeals.
The owner of registration number 1643707 thus filed a petition for administrative litigation with the IP Court. During the litigation proceedings, the owner did not deny the popularity of the television series Downton Abbey. Instead, it argued that Downton Abbey/唐頓莊園 was merely the title of a show and had not been used as a trade mark. In addition, since alcohol, wine and the like covered by registration number 1643707 are remote in nature from "TV programme production service or video tapes/books of TV shows" offered/sold by the opposer in accordance with the Manual of Classification of Goods/Services published by the IP Office, the owner averred that the two parties' goods/services are not in competitive proximity and registration of the opposed mark 唐頓莊園Downton Abbey in class 33 is unlikely to engender a likelihood of consumer confusion in the marketplace.
Registration number 1643707 was eventually cancelled. The IP Court ruled that Downton Abbey/唐頓莊園 had established its reputation through extensive exposure since it is the title of a popular TV show with a large audience and the opposer has diversified its business by launching, among other things, alcohol and wine under the mark Downton Abbey in the marketplace. Therefore, registration of the opposed mark in class 33 in respect of alcohol, wine and the like is likely to engender consumer confusion and disparage the reputation of the opposer's famous mark.
Julia Y M Hung |
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