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Can "Event Sponsorship" Serve to Establish a Trademark's Well-Known Status?—A Discussion of Brands' Marketing Efforts by way of Sponsoring Recent Sports Competitions
I. Introduction
With enthusiasm for Tokyo 2020 Summer Olympics and the Beijing 2022 Winter Olympics ensuing, the highly anticipated FIFA World Cup 2022 will be held in Qatar by the end of the year. While athletes giving their all on behalf of their country will no doubt be in the spotlight, advertising boards in sports venues displaying various major global brands as sponsors often become a competitive highlight besides the athletic one.
"Event sponsorship marketing" is a brand marketing approach by which a business funds a social event, or cultural or sports competition that is in the public interest or has entertainment value. Not only does it help to shape a business's corporate and brand image, but the business gains the opportunity to have their brand or goods seen by consumers residing in an extensive scope of area through various activities and competitions tuned in by ten millions, or even billions, of consumers worldwide, with relatively low expense. With this approach, a business is able to implant a positive image of its brand deep in the minds of consumers. When consumers identify with a sponsor's brand, the extent to which consumers are willing to purchase goods bearing the brand will be greatly enhanced. The effect of such advertising is far greater than that achieved by any conventional advertising methods such as print media or television.
The aforementioned benefits should show that "event sponsorship marketing" in today's society has become a trend, a marketing approach indispensable to various major brand or business owners. Sponsoring is no longer simply giving money. In order to make advertising highly effective and foster customer-brand identification, major brand or business owners prudently select competitions or activities that suit their products when making sponsorship decisions. For instance, sportswear providers sponsor large-scale sports competitions; businesses making nutritional supplements mostly sponsor charitable activities related to medicine and healthcare; and jewelry makers and cosmetics brands often sponsor fashion weeks. By sponsoring activities and competitions that share similarities in the nature of the product offered and overlap in customer base, brands achieve the advertising and marketing goal of extensively getting consumers to recognize their brands and goods, for this constitutes the core objective of business owners' sponsorship of activities and competitions.
II. Do courts adopt "event sponsorship" as proof of a trademark's well-known status?
Currently, various brand or business owners customarily utilize "event sponsorship" as an advertising method. In trademark litigation practice, it is supposed to be a useful tool in establishing a trademark's well-known status. However, administrative judgments rendered by the Intellectual Property and Commercial Court (hereinafter, the IPC Court) over the years have mostly rejected "event sponsorship" as evidence of a trademark's well-known status, mostly for the following three reasons:
1. The competition or event, taking place in other countries, sponsored by the brand or business owner at issue may not necessarily be known to domestic consumers.
2. There remains doubt as to whether the trademark of the business at issue is seen by domestic consumers because of their viewing of the sponsored competition or event taking place in other countries.
3. In the course of event sponsorship, the brand at issue is not shown in conjunction with its designated goods before consumers. Therefore, the branded trademark shown in the sponsored competition or event only conveys to consumers the impression of a sponsor's trademark. Consumers have no way of knowing what the goods symbolized by such trademark are.
The IPC Court's stance means that business owners dedicating money, time and effort to accumulating brand recognition and identification through sponsorship for marketing purposes are unable to enjoy the fruits of their endeavors, namely brand protection. As such stance affords a less than satisfactory protection of brands, whether it is proper and just is questionable.
III. Building evidence to show that a trademark is well-known
(I)Whether consumers know of the trademark at issue is crucial
The forepart of Article 30-1(11) of the Trademark Act provides the following:
"A trademark may not be registered in any of the following circumstances: (11) The trademark, being identical or similar to another's well-known trademark or mark, causes a likelihood of confusion or misidentification by the relevant public."
The determination of whether a trademark is "well-known"—as elucidated by the Examination Guidelines for the Protection of Well-known Trademarks under Article 30-1(11) of the Trademark Act (the "Examination Guidelines for Well-known Trademarks")—shall be based on the perception of domestic consumers. However, even if a trademark has never been used domestically or its actual domestic use is not extensive, it can still be deemed well-known if there is objective evidence to show that the fame of the trademark established through extensive use in other countries has reached Taiwan.
According to the Examination Guidelines for Well-known Trademarks, "objective evidence" shall include invoices, distribution documents, and import-export documents for goods or services bearing the branded trademarks, and particulars such as sales figures, market share and sales statistics of the goods or services, as well as domestic and foreign advertising materials from the mass media, such as newspapers, magazines, and television, including information as to the size of the advertisement, the amount of money spent on advertising, the volume of advertising, and evidentiary materials such as applications for placement of advertisement, records of TV commercials, and advertisements on the sides of buses, at bus stops, in MRT stations, on highway billboards, on store signboards and on roadside billboards.
While such evidence does not directly show the use of the trademark at issue on its designated goods or services, the trademark may be deemed domestically well-known as long as the evidence is sufficient for domestic consumers to recognize and know of the fame established by the trademark through its extensive use in other countries.
Therefore, the key to whether a trademark is well-known is whether it is known to domestic consumers, not whether the mark has been actually put to domestic use.
(II)The goal of "event sponsorship" is to get consumers to learn about the sponsor's brand and product.
"Event sponsorship" is an advertising method by which various major brand or business owners sponsor competitions or activities that suit their products to achieve the goal of extensively getting consumers to recognize their brands and goods. These brand or business owners and the activities they sponsor have overlapping audiences or consumers. To attract their attention, brand or business owners will as a matter of course attempt to publicize as much as possible their brands and goods by simultaneously displaying their branded trademarks and main line of products on the advertising boards they sponsor, or handing out product samples bearing their branded trademarks during events. With coverage and broadcasting by media outlets in various countries, brand or business owners can actively distribute press releases in target markets and countries. Such endeavors will then be sufficient for the relevant consumers located thousands of miles away to learn about the brands and goods of sponsors.
(III)Conclusion
If corporate sponsors can submit evidentiary materials deemed "objective evidence" as provided in the Examination Guidelines for Well-known Trademarks to prove that the competition or event held in other countries sponsored by brand or business owners have been covered by major or several domestic news outlets, it shall be deemed that such competition or event held in other countries is known to domestic consumers.
In the meantime, if other appropriate, objective evidence is submitted as well, such as a screenshot of the event's domestic broadcast in which the brand or business owner's trademark and goods are displayed, or a domestic press release for the competition or event held in other countries sponsored by the business owner in which the sponsored brand and branded goods are mentioned, or the same containing a photo showing the event along with the sponsoring brand and branded goods, the court should conclude that the relevant domestic consumers can see the business owner's brand via broadcast or media coverage and get to learn about the goods symbolized by the brand.
Such conclusion can meet the trend of marketing the brand by ''event sponsorship'' by brand or business owners and can protect the well-known trademarks.