Taiwan changes the threshold to establish a claim of dilution of a trademark
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Taiwan changes the threshold to establish a claim of dilution of a trademark

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Amanda Y S Liu of Saint Island International Patent & Law Offices reports that a trademark now only needs to be well known to relevant businesses or consumers to establish a claim of dilution in Taiwan

According to Article 30.1.11 of Taiwan’s Trademark Act, a trademark shall not be registered if it is identical or similar to a well-known trademark or emblem and thus likely to engender confusion among the public or dilute the distinctive character or reputation of the well-known trademark.

On March 17 2023, the Grand Chamber of Taiwan’s Supreme Administrative Court rendered a ruling that established a unanimous legal interpretation regarding the definition of a “well-known trademark” as referred to in Article 30.1.11 of the Trademark Act. To be more specific, it denotes a trademark that is widely known to the relevant businesses or consumers, as proved by objective evidence.

This interpretation has changed the long-standing practice requiring that a well-known trademark as referred to in Article 30.1.11 of the Trademark Act must reach the level of awareness of the public at large to risk diluting the distinctive character or reputation of a well-known trademark.

Background

On May 3 2017, an applicant, Anna Bella Van Lente, applied for registration of the ‘Giovanni Valentino’ trademark in respect of several goods in Class 24, including fabrics, thin silk, and textile tapestries. The trademark was approved for registration after examination by the Taiwan Intellectual Property Office. Nevertheless, an Italian company, LVMH, filed an opposition against registration of the ‘Giovanni Valentino’ trademark.

LVMH claimed – on the basis of the well-known trademarks ‘Valentino’, ‘Valentino and design’, and ‘Valentino Garavani and design’ – that allowing registration of the opposed trademark was in violation of Article 30.1.11 of the Trademark Act, which prohibits registration of a trademark that is identical or confusingly similar to a well-known trademark and would thereby dilute the distinctive character or reputation of the well-known trademark.

The opposition was dismissed by the Taiwan Intellectual Property Office. After the Board of Patent Appeals and Interferences and the Intellectual Property and Commercial Court upheld the office’s decision, LVMH filed an appeal with the Supreme Administrative Court, the last legal resort.

During a hearing, the panel members of the Supreme Administrative Court had divided opinions regarding the standard for the level of awareness of a well-known trademark as referred to in Article 30.1.11. Should the trademark be "known to the public at large", or does "general awareness of relevant consumers" suffice? The disagreement of the legal opinions was thus brought to the Grand Chamber of the Supreme Administrative Court for a resolution.

The interpretation of the Grand Chamber

The Grand Chamber of the Supreme Administrative Court made the following interpretations:

  • According to the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks published by WIPO in September 1999, whether the reputation of a trademark should reach the level of ‘public at large’ awareness or ‘relevant consumers’ awareness, thus possibly causing dilution of its reputation, shall be determined by individual member countries.

  • The reference in Article 30.1.11 that “a trademark shall not be registered if it is the same as or similar to a well-known trademark or emblem of another” is also a prerequisite for dilution of a well-known trademark. Accordingly, the "well-known trademark" referred to in the former and latter parts of Article 30.1.11 of the Trademark Act should have the same definition.

  • According to Article 31 of the Implementation Rules of the Trademark Act, "reputation" means having objective evidence to prove that a trademark is widely known to the relevant industries or consumers. The definition of a well-known trademark referred to in the former or latter parts of Article 30.1.11 of the Trademark Act should not be at variance.

  • According to Section 3.2 of the Criteria for Examination of Protection of Well-known Trademarks under Article 30.1.11 of the Trademark Act, it is not necessary for the reputation of a well-known trademark to reach a higher level of awareness; i.e., a level of awareness in the public at large as referred to in the latter part of Article 30.1.11 of the Trademark Act. In other words, to reach the level of ‘relevant consumers’ awareness suffices.

Based on the above, a well-known trademark as referred to in the latter part of Article 30.1.11 of the Trademark Act regarding the risk of dilution of the distinctive character or reputation of a well-known trademark means that a trademark has proved by objective evidence that it is widely known to the relevant industries or consumers; i.e., without the need to reach the higher level of the awareness of the public at large.

Impact of the ruling

The aforementioned unanimous legal interpretation by the Grand Chamber of the Supreme Administrative Court has changed the long-standing practice. Thus, a well-known trademark as referred to in Article 30.1.11 of the Trademark Act only needs to reach the level of ‘relevant consumers or businesses’ awareness, instead of ‘the public at large’ awareness.

However, whether there is a risk of dilution of the distinctive character or reputation of a well-known trademark still needs to consider other factors case by case, such as the degree of similarity between trademarks, the degree to which the trademark is commonly used on other goods or services, the inherent or acquired distinctiveness of the well-known trademark, and whether the opposed mark owner intends to associate its trademark with the well-known trademark.

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