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17 March 2023 ruling of Grand Chamber of Supreme Administrative Court unifies legal opinions regarding definition of "well-known trademark" in latter part of Article 30-1(11) of the Trademark Act
17 March 2023 ruling of Grand Chamber of
Supreme Administrative Court unifies legal opinions regarding definition of
"well-known trademark" in latter part of Article 30-1(11) of the Trademark Act
In connection with an issue of law pertaining to a trademark opposition represented by Lee and Li, the Grand Chamber of the Supreme Administrative Court on 17 February 2023 first time ever held oral debates for the ruling Da-Zi No. 1 of 2022. On 17 March 2023, the Grand Chamber ruled in favor of Lee and Li, with the main text of the ruling as follows: "The 'well-known trademark' mentioned in the latter part of Article 30-1(11) of the Trademark Act refers to a trademark that has objective evidence sufficient to identify it as being widely recognized by relevant businesses or consumers. The extent of well-known does not have to extend to general consumers for the latter part of said article to be applicable."
Article 30-1(11) of the Trademark Act stipulates the following: "A trademark may not be registered in any of the following circumstances: … (11) it is identical or similar to another person's well-known trademark or mark and is thus likely to cause confusion or misidentification by the relevant consumers or it is likely to dilute the distinctiveness or reputation of a well-known trademark or mark." The former part of the provision seeks to prevent any likelihood of confusion or misidentification by the relevant consumers as to the source of goods or services—the aim is to protect the relevant consumers. The latter part seeks to prevent a likelihood of dilution of the distinctiveness or reputation of a well-known trademark—the aim is to protect the value inherent in the well-known trademark. The former and latter parts of the provision thus differ in legislative purposes, protect different targets, and vary in their scope of protection. Before the ruling of 17 March 23, the interpretation of "well-known" in the latter part had been in dispute, with some considering that the criteria should be the same as the former part, while others contended that "well-known" in the latter part should extend to the general consumers and not just the relevant consumers as the former part.
The resolution adopted by the Supreme Administrative Court's First Joint Committee of Division Chief Judges in November 2016 determined that the meaning of "well-known" with regard to "well-known trademark" in the latter part of Article 30-1(11) meant a trademark widely recognized by the general consumers, rather than by the relevant consumers, in order for the latter part of said article to apply. The resolution has resulted in the latter part of Article 30-1(11) becoming very difficult to be applied.
The ruling of the Grand Chamber has fundamentally changed the said resolution, so that a trademark that has been recognized by relevant consumers but not yet recognized by general consumers can now be protected under the latter part of Article 30-1(11), thereby reducing the risk of trademark dilution of a well-known trademark.
The Grand Chamber's interpretation also makes it clear that any future determination regarding the likelihood of dilution of the distinctiveness or reputation of a well-known trademark will continue to be made by comprehensively considering the various factors listed in Section 3.3 of the Examination Guidelines for the Protection of Well-Known Trademarks under Article 30-1(11) of the Trademark Act. These factors are as follows: the extent to which the trademark is well-known; the extent of similarity between the trademarks at issue; the extent to which the trademarks are widely used in connection with other goods or services; the extent of the inherent or acquired distinctiveness of the well-known trademark; and other factors, e.g., whether the owner of the registered trademark at issue intended to mislead others into believing that it is associated with the well-known trademark.