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【Trademarks】A case related to the trademark “旺旺” selected by TIPO for recent years

2022-07-22

Whether the trademark is well-known enough to be entitled to the protection against likelihood of dilution of the reputation
Contested trademark Cited trademark
Registered No. 01174816
Classes 1, 2, 5, 6, 7, 8, 9, 10, 11, 12, 14,
16, 17, 18, 19, 20, 21, 22, 26, 29, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45		 Registered No. 01515970
Class 35: Advertising planning, design, production, agency and dissemination, and distribution of promotional product…
【Decision No】Civil Judgement of the Intellectual Property Court, 2020 Min
Shang Shang Zi No. 9 
【Date】October 22, 2020
【Issue】Is the protective scope varying among well-known trademarks
due to different levels of fame?
【Relevant statutes】Articles 30.1.11 and Subparagraph 2 of Article 70 of the
Trademark Act
【Decision Highlight】
  1. he expression “likelihood of dilution of the distinctiveness of well-known trademarks” refers to the likelihood that the distinctiveness of well-known trademarks may be diminished. That is to say, originally, the use of a well-known trademark on certain goods or services is capable to create the association with a single source; nevertheless, when the capability of the trademark to indicate the single source is gradually reduced or dispersed by unauthorized use made by third parties, it is highly possible that the trademark will become the one that indicates two or more sources, which is not capable to leave the sole association and unique impression in the mind of the public. The expression “likelihood of dilution of the reputation of well-known trademarks” refers to the likelihood that the reputation of a well-known trademark may be tarnished. For example, the creation of a disparaging or negative association in the mind of the consumers regarding the quality and reputation of a well-known trademark due to unauthorized use made by third parties. When determining whether there is any likelihood of dilution of the distinctiveness or reputation of well-known trademarks, following factors shall be considered:
    1. (1) The extent to which the trademark is well-known: If a trademark enjoys a higher level of fame, there is higher possibility that the distinctiveness and reputation of the trademark is going to be diluted.
    2. (2) The degree of similarity between trademarks: With respect to the degree of similarity, a higher degree is required to determine there is likelihood of dilution comparing with the determination of likelihood of confusion. When two trademarks are not identical with each other and the degree of similarity is not high, it is comparatively difficult to establish there is likelihood that the distinctiveness or reputation of the well-known trademark at issue is going to be diluted.
    3. (3) The extent to which the trademark is widely used in connection with other goods/services: If a trademark has been widely used by third parties in connection with different goods/services, the extent of exclusive use of the trademark is relatively low. The distinctiveness or reputation of such a trademark is less likely to be diluted.
    4. (4) The level of inherent or acquired distinctiveness of the well-known trademark: It may be true that the distinctiveness of a trademark is associated with the level of fame the trademark enjoys, but the creativity embodied in the trademark is also an important factor to identify its distinctiveness. Accordingly, the object of the protection against trademark dilution is trademarks that enjoy a higher level of distinctiveness and fame, and it is easier for coined trademarks to achieve such a level of distinctiveness and fame.
    5. (5) Other factors to be considered.
  2. As to the provision of the latter part of Article 30.1.11 related to dilution of well-known trademarks, it shall be interpreted as meaning that the fame of such well-known trademarks shall attain the level that it is widely recognized by not just the “relevant public” but the“general public”, which is different from the interpretation of the fore part of the same subparagraph related to likelihood of confusion that only requires it is widely recognized by the “relevant public”. (Referring to Judgment of the Supreme Administrative Court, 2018 Pan Zi No. 446). According to the legal doctrine that the same term has the same connotation, the interpretation related to dilution mentioned above shall be applied to disputes of trademark infringement as well. Therefore, the well-known trademarks protected by subparagraph 2 of Article 70 of the Trademark Act, regarding conducts deemed to be trademark infringement due to the fact that these conducts may dilute the distinctiveness or reputation of well-known trademarks, shall be limited to those with a high level of fame that are widely known by the “general public”.
[Learning point]
From the decision of this case, we could find that in court practices, when it is to determine the likelihood of dilution of the distinctiveness of a well-known trademark, the scope of protection would be broader than in cases of determining the risk of confusion with a well-known trademark. I.e. the scope of protection in such trademark dilution cases would extend to goods or services which are not identical or similar. Therefore, in order to strike a balance against the impact to free-competition in the market, the required level of fame for well-known trademarks in trademark dilution cases will be higher, that the trademark needs to be widely recognized by “general public”. Hence, if a well-known trademark proprietor would like to make a claim on the grounds of trademark dilution, it would need to provide wider and larger amount of evidences, in order to prove that the trademark has been widely recognized by “general public”.
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