According to Article 30.1.11 of the Trademark Act, a trademark shall not be registered if it is identical with or similar to another’s well-known trademark or emblem of another and thus likely to engender confusion among the related public or dilute the distinctive character or reputation of the well-known trademark.
On March 17, 2023, the Grand Chamber of the Supreme Administrative Court rendered a Ruling, and established a unanimous legal interpretation regarding the definition of “well-known trademark” referred to in Article 30.1.11 of the Trademark Act. To be more specific, it denotes a trademark that is widely known to the relevant businesses or consumers, as proved by objective evidence. To this end, there is no need for a well-known trademark to reach the level of awareness of the public at large. This interpretation has changed the long-standing practice requiring that a "well-known trademark" referred to in Article 30.1.11 of the Trademark Act, which concerns the risk of diluting the distinctive character or reputation of a well-known trademark, reaches a level of the awareness of the public at large.
Background
On May 3, 2017, an applicant, Anna Bella Van Lente, applied for registration of the "GIOVANNI VALENTINO" trademark in respect of several goods in Class 24, including fabrics, thin silk, and textile tapestries, etc. The trademark was approved for registration after examination by the Intellectual Property Office. Nevertheless, an Italian company by the name of LVMH filed an Opposition against registration of the "GIOVANNI VALENTINO" trademark. It claimed, on the basis of the well-known trademarks "VALENTINO", "VALENTINO and design", and "VALENTINO GARAVANI and design", that allowing registration of the opposed trademark was in violation of Article 30.1.11 of the Trademark Act, which prohibits registration of a trademark that is identical with or confusingly similar to a well-known trademark, to thereby dilute the distinctive character or reputation of the well-known trademark
The Opposition was dismissed by the Intellectual Property Office. After the Board of Appeals and the Intellectual Property and Commerce Court upheld the Office’s decision, LVMH filed an appeal with the Supreme Administrative Court--the last legal resort.
During a hearing, the panel members of the Supreme Administrative Court had divided opinions regarding the standard for the level of “well-known” trademark referred to in Article 31.1.11, should it be one known to the public at large" or if it suffices as long as the level of "general awareness of relevant consumers" has reached? The disagreement of the legal opinions was thus brought to the Grand Chamber of the Supreme Administrative Court for solution.
The Interpretation by the Grand Chamber
The Grand Chamber of the Supreme Administrative Court made the following interpretations:
- According to the “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” published by WIPO in September 1999, whether the reputation of a trademark should reach the level of public at large awareness or relevant consumers awareness, thus possibly causing dilution of its reputation shall be determined by individual member countries.
- What is referred to in Article 30.1.11 that “a trademark shall not be registered if it is the same as or similar to a well-known trademark or emblem of another” is a prerequisite for dilution of a well-known trademark as well. Accordingly, the "well-known trademark" referred to in both the former and latter parts of Article 30.1.11 the Trademark Act should have the same definition.
- According to Article 31 of the Implementation Rules of the Trademark Act, "reputation" means having objective evidence to prove that a trademark is widely known to the relevant industries or consumers. The definition of "well-known trademark" referred to in both the former or latter parts of Article 30.1.11 of the Trademark Act should not be at variance.
- According to Section 3.2 of the "Criteria for Examination of Protection of Well-known Trademarks under Article 30.1.11 of the Trademark Act," it is not necessary for the reputation of a well-known trademark to reach a higher level of awareness, i.e. a level of awareness by the public at large as referred to in the latter part of Article 30.1.11 of the Trademark Act. In other words, to reach a level of relevant consumers awareness suffices.
Based on the above, a “well-known trademark" referred to in the latter part of Article 30.1.11of the Trademark Act regarding the risk of dilution of the distinctive character or reputation of a well-known trademark means that a trademark is proved by objective evidence that it is widely known to the relevant industries or consumers, i.e. without the need to reach the higher level of the awareness of the public at large.
Conclusion
The aforementioned unanimous legal interpretation by the Grand Chamber of the Supreme Administrative Court has changed the long-standing practice. Thus, a "well-known trademark” referred to in Article 30.1.11 of the Trademark Act only needs to reach a level of "relevant consumers or businesses awareness," instead of "the public at large awareness." However, whether there is a risk of dilution of the distinctive character or reputation of a well-known trademark still needs to consider other factors case by case, such as the degree of similarity between trademarks, the degree to which the trademark is commonly used on other goods or services, the inherent or acquired distinctiveness of the well-known trademark, and whether the opposed mark owner intends to associate his trademark with the well-known trademark.