The Scope of Well-Known Trademark Rights

【Case】

China's well-known trademark “大益” was registered for numerous products by its former Taiwan distributor. When it’s owner ,TAETEA Group, applied for the cancellation of the trademark, the Taiwan Intellectual Property Office only cancelled the services of "agricultural” and “beverage retail and wholesale". TAETEA Groupfiled an indictment. The court held that “大益” was indeed a well-known trademark, but its popularity was limited to tea-related products. It was not considered well-known in regards to the former distributor’s registered goods or services, and the plaintiff’s motion was dismissed.

(Source: Liberty Times)

【Viewpoints of the court】

1. The protection of well-known trademarks encompassing the full range of goods and services.

To use a trademark being identical with or similar to another person’s well-known trademark would have a chance to hence a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark, even though the goods for the disputed trademark are not related to the goods for the opponent’s mark. (The Supreme Administrative Court 101 Judgment No. 47 Administrative Judgment)

2.  The protection of well-known trademarks not encompassing the full range of goods and services.

Considering the plaintiff has less of a possibility of filling the gap in the market, the protection of well-known trademarks shall not encompass the full range of goods and services. (Civil Judgment No. 84 of Taiwan Intellectual Property Court (Year 103)

【Analysis】

Is there a limit to the protection of famous trademarks?

The protection of well-known trademarks is, in principle, an exception to the principle of registration protection and trademark territorialism. Therefore, it is reasonable that Civil Judgment No. 84 of Taiwan Intellectual Property Court (Year 103) assumed “the possibility of filling the gap in the market” as a limit to the protection of famous trademarks.

Author:Irene Chen