Newsletter
Unified Legal Opinion of Grand Chamber of Supreme Administrative Court: The well-known trademark referred to in the Trademark Act concerning the likelihood of detracting from the identity or reputation of well-known trademarks or marks refers to the trademarks that are widely recognized by relevant businesses or consumers
Key Issue:
Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act stipulates that a trademark should be not registrable: being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.
Should the well-known trademarks mentioned in the latter paragraph of the article be interpreted as surpassing relevant consumers and reaching the level of general consumers' knowledge so that the provisions of the latter paragraph apply? Or is it just enough to be generally recognized by relevant enterprises or consumers? The views of different courts differ.
Unified Legal Opinion of Grand Chamber of Supreme Administrative Court:
On 17 March 2023, the Grand Chamber of the Supreme Administrative Court made a ruling, which states: The well-known trademarks mentioned in the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act refer to the well-known trademarks that have been generally recognized by relevant enterprises or consumers and do not have to be generally recognized by general consumers.
Main Governing Laws:
Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act stipulates that a trademark should be not registrable: being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.
Article 15-1, Paragraph 1 of Article 15-2, and Article 15-10 of the Administrative Court Organization Act stipulate respectively that the Supreme Administrative Court shall establish a Grand Chamber to adjudicate legal disputes. When any of the judges of the Supreme Administrative Court reviews a trial case, if the judgment-based legal opinion is deemed, after a review, different from the antecedent legal opinion for the judgment, reasons should be stated in a ruling, and the case should be submitted to the Grand Chamber for adjudication. The ruling of a Grand Chamber is legally binding on cases submitted by the submitting courts.
Factual Background:
Valentino S.p.A. claimed that the trademark GIOVANNI VALENTINO Reg. No. 1920292 is confusingly similar to its registered trademark VALENTINO and then filed a trademark opposition based on the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act. After review by the Intellectual Property Office, the opposition was reject. Valentino S.p.A. then filed an administrative lawsuit after the administrative appeal with the Ministry of Economic Affairs failed. The Intellectual Property Court (renamed as the Intellectual Property and Commercial Court on 1 July) rejected the administrative lawsuit later. Valentino S.p.A. further lodged an appeal with the Supreme Administrative Court.
The judges of the panel of the Supreme Administrative Court hearing this administrative lawsuit raised the legal issue applicable to the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act. After consulting the opinions of the judges of other panels, there are still differences of the opinions. This panel then submitted this legal issue to the Grand Chamber of the Supreme Administrative Court for adjudication in accordance with Article 15-2 of the Administrative Court Organization Act.
The Grand Chamber of the Supreme Administrative Court made a ruling on 17 March 2023 after it held a preliminary hearing on 20 November 2022 to review this legal issue and held an oral debate hearing on 17 February 2023.
Key points of Ruling of Grand Chamber of Supreme Administrative Court:
1. Article 31 of the Enforcement Rules of the Trademark Act has stated that the term well-known as prescribed in the Trademark Act refers to the circumstance where there is objective proof of a sign capable of being commonly recognized by the relevant enterprises or consumers. The Examination Guidelines for the Protection of Well-known Trademarks under Subparagraph 11of Paragraph 1 of Article 30of the Trademark Act has same provisions.
2. In 2003 when the Trademark Act increased Article 23 (that is, Article 30 of the current Act), which governs dilution of a well-known trademark, the fame of trademarks is not stipulated to be increased to the level of the general knowledge of general consumers.
3. Conclusion: The term well-known trademark mentioned in the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act refers to a trademark that has objective evidence sufficient to identify it as having been widely recognized by related enterprises or consumers, and does not need to reach general consumers. As for whether there is a risk of impairing the recognition or reputation of a well-known trademark, it should consider the degree of well-known trademarks, the degree of similarity of trademarks, the degree of widespread use of trademarks for other goods/services, the degree of innate or acquired recognition of well-known trademarks and the degree of whether the trademark owner of the disputed trademark has the intention to associate its trademark with the well-known trademark and other factors.
Comments:
The Supreme Administrative Court’s 1st joint meeting of chief judges in November 2015 decided that the well-known trademarks mentioned in the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 should be interpreted as surpassing relevant consumers and reaching the level of general consumers' knowledge. The latter paragraph of this regulation applies only to the degree of general knowledge of general consumers.
The Grand Chamber of the Supreme Administrative Court made this ruling to change the opinion of the above-mentioned joint meeting of judges so that trademarks that have reached the knowledge of relevant consumers but not yet known to general consumers can apply the latter paragraph of Subparagraph 11, Paragraph 1, Article 30 of the Trademark Act so as to reduce the risk of trademark identification or reputation being diluted.