The Supreme Court defines a famous trademark primarily based on its widespread recognition and exceptional distinctiveness in both commercial and public perception. A famous trademark typically holds a unique status that surpasses that of ordinary goods or services, possessing a reputation and identification far beyond that of other general trademarks. The Supreme Court generally evaluates the fame of a trademark in the market, its commercial value, the duration of its historical use, and the extent of public awareness, among other factors.
Additionally, the Supreme Court may refer to international practices and relevant legal regulations to ensure that the protection of famous trademarks reaches a reasonable and consistent level. For applications identified as famous trademarks, the court may apply more stringent standards to ensure that these trademarks receive comprehensive and robust legal protection.
In summary, the Supreme Court’s definition of a famous trademark is based on its outstanding position in both the commercial and public domains. The court typically employs a comprehensive consideration approach to determine whether a trademark possesses sufficient recognition and uniqueness to warrant additional legal protection.
FACTS
A British woman’s application for a trademark has stirred up opposition, with the Italian company Lawrentino expressing concerns that the application may undermine the distinctive nature or reputation of their well-known trademark. The level of fame required for a trademark remains a point of contention—whether it should reach the general awareness of consumers or merely the recognition of relevant consumers. The Supreme Administrative Court referred this question to the Grand Chamber in October of last year, and the Grand Chamber recently provided an answer.
The British woman applied for the trademark “GIOVANNI VALENTINO,” specifying its use for goods in Class 24, such as fabrics, home furnishings or bedding, bedspreads, tablecloths, and similar items. Subsequently, there was a change in the applicant, and after examination by the Intellectual Property Office, the trademark was approved.
The opposing party, Lawrentino, an Italian company, argues that “VALENTINO” has already attained the status of a well-known trademark. They have registered numerous related trademarks featuring “VALENTINO” in Taiwan, covering various products like clothing, headwear, belts, and leather goods, all crafted by the renowned Italian designer Valentino Garavani. These products enjoy widespread popularity among globally recognized figures, are extensively covered in newspapers and magazines, and achieved numerous awards. “VALENTINO” has thus established itself as a well-known trademark. Allowing the registration of the “GIOVANNI VALENTINO” trademark, according to Lawrentino, could lead to consumer confusion, making it challenging to distinguish whether the well-known “VALENTINO” trademark belongs to Lawrentino. This, in turn, would compromise the distinctive nature and reputation of the well-known trademark.
Taiwan Trademark Law Article 30, Paragraph 1, Item 11: Protection of Well-Known Trademarks
Article 30, Paragraph 1, Item 11 of the Trademark Law prohibits the registration of a trademark that is “identical with or similar to another person’s well-known trademark or emblem, likely to confuse the relevant public” (first part of Item 11) or “likely to diminish the distinctive nature or reputation of a well-known trademark or emblem” (latter part of Item 11). However, there exists internal divergence within the Supreme Administrative Court regarding the required level of fame for the latter part of Item 11. The question revolves around whether the well-known trademark should attain “general awareness among ordinary consumers” or merely meet the standard of “common recognition among relevant consumers.
The opinion advocating that the level of fame should reach “general awareness among ordinary consumers” contends that the well-known trademark must be widely recognized by the general public.
The first part of Item 11 aims to prevent the likelihood of confusion among the relevant public regarding the source of goods or services, protecting the interests of the consumers associated with the products or services that the trademark is used for. However, the latter part of Item 11 is focused on avoiding potential harm to the distinctive nature or reputation of a well-known trademark in the subjective perception of the general consumers. The protection is extended to the well-known trademark itself and is not limited to the same or similar category of goods or services that the trademark is associated with. The objects and scope of protection for the two provisions are different.
If a trademark is only famous among consumers of a specific category of goods or services and lacks fame among consumers of other categories, it should not be granted exclusive rights or a monopoly for use in different categories of goods or services. Granting such rights could result in unfair competition in the market.
The opinion asserting that the level of fame for the latter part of Item 11 does not necessarily need to reach “general awareness among ordinary consumers” contends that it is not essential for the well-known trademark to be universally known by the general public.
The trademark law does not distinguish between the level of awareness among the general public and that among relevant consumers regarding well-known trademarks. The legislative rationale also does not elevate the level of fame for trademarks under the latter part of Article 11 to the extent of general awareness among ordinary consumers. Additionally, while the criteria for the protection and examination of well-known trademarks note that the requirement for the level of fame under the latter part of Article 11 should be higher than that under the first part of Article 11, it does not stipulate that the well-known trademarks in the latter part of Article 11 must reach the level of general awareness among ordinary consumers.
The grand chamber’s ruling
The grand chamber clarified whether the fame level of a well-known trademark, as mentioned in Article 30, Paragraph 1, Item 11, latter part of the Trademark Law, should be interpreted as surpassing the awareness of relevant consumers and reaching the general public for the provision to apply. Finally, on March 17, 2023, the grand chamber made a decision, stating that there is no distinction in the fame level between the first and latter parts of Item 11. Both should be interpreted as: “Widely recognized by relevant businesses or consumers, without the need to reach the level of general awareness among ordinary consumers.“
Source: TIPO
「姓名標示─非商業性─禁止改作」授權條款臺灣3.0版
本著作採「創用CC」之授權模式，僅限於非營利、禁止改作且標示著作人姓名之條件下，得利用本著作。
Author
吳靜芸 Gena Wu
商標專員