Date: 17 July 2024

【Volume 140】

The Grand Chamber of the Taiwan Supreme Administrative Court announced a unified standard for determining “well-known trademarks” protected under Paragraph 1(11), Article 30 “Provision on the Protection against Dilution of Well-known Trademarks” of the Taiwan Trademark Act (“Provision”) in its 2022 Da Zhi No. 1 Ruling of March 17, 2023. According to the ruling, a trademark qualifies as a well-known trademark as long as there is objective evidence that proves it is a trademark widely recognized by the relevant industry or consumer, regardless of whether it has reached the level of being commonly known to the average consumer.

Case Fact

The Italian fashion brand Valentino S.p.A filed an opposition against the registered Taiwan trademark “GIOVANNI VALENTINO” owned by a Taiwanese company YUNIX INTERNATIONAL CORP., claiming that Provision on the Protection against Dilution of Well-known Trademarks applies to its well-known trademarks “VALENTINO”. The case was appealed to the Supreme Administrative Court.

The Supreme Administrative Court had a different opinion on the determination of a “well-known trademark” from prior decisions, thus the case was subsequently presented to the Great Chamber.

Trademark owner	YUNIX INTERNATIONAL CORP.	Valentino S.p.A
Trademark
Class(es)	24	3, 14, 16, 19, 20, 21, 23, 24, 25, 35 etc.

Past Opinion – Supreme Administrative Court’s Presiding Judges Committee 1st Meeting Resolution of November 2016:

Considering that the Provision covers goods/services whose conflict of interest is not obvious, a trademark shall reach a level of fame where it is commonly known to the average consumer for the Provision to apply.

Latest Opinion – Supreme Administrative Court 2022 Da Zhi No. 1 Ruling of March 17, 2023:

The term “well-known trademark” referred to in the latter portion of Paragraph 1(11), Article 30 of the Taiwan Trademark Act has the same definition as the “well-known trademark” in other parts of the Trademark Act, i.e., a trademark with “objective evidence that proves it is a trademark widely recognized by the relevant industry or consumer”.

Significance of the ruling

The latest opinion unifies the standard for determining a “well-known trademark” with that provided in Article 31 of the Enforcement Rules of the Trademark Act, i.e., “where there is objective evidence that proves it is a trademark widely recognized by the relevant industry or consumer”. With this definition, the long-standing issue that the term “well-known trademark” is defined differently in administrative and civil litigation is resolved.