LVMH ruling establishes new interpretations of well-known marks and their protection

On 17 March 2023 a ruling from the Grand Chamber of Taiwan’s Supreme Administrative Court on a conflict between trademark applicant Anna Bella Van Lente and luxury goods company LVMH established a unanimous legal interpretation of the definition of a ‘well-known trademark’, as referred to in Article 30.1.11 of the Taiwanese Trademark Act.

The decision alters the definition’s previous interpretation, negating the need for a registered trademark to garner awareness among the public at large to reach well-known status. It further changes longstanding trademark enforcement practices in Taiwan, sharpening the focus on objective evidence of infringement related to a registered mark’s relevant business or customers.

Taiwan’s definition of a well-known trademark

According to Article 30.1.11, a trademark shall not be registered if it is identical or similar to another well-known trademark or emblem. This blocks the registration of marks likely to engender confusion among the public or dilute a well-known mark’s distinctive character or reputation.

Failures of LVMH’s initial opposition and appeal

On 3 May 2017 Anna Bella Van Lente applied to register the trademark GIOVANNI VALENTINO for several goods in Class 24, including fabrics, thin silk, textile tapestries and other fashion items. The trademark was approved for registration by the Taiwan Intellectual Property Office (TIPO) after examination.

However, the famous producer of luxury goods LVMH filed an opposition, claiming that it infringed on its well-known VALENTINO, VALENTINO AND DESIGN and VALENTINO GARAVANI AND DESIGN marks in violation of Article 30.1.11.

The opposition was dismissed by the TIPO, whose decision was upheld by the Board of Appeals and the IP and Commerce Court. As a last legal resort, LVMH filed an appeal with the country’s Supreme Administrative Court.

The Supreme Administrative Court’s deliberation

In a hearing on the dispute, the Supreme Administrative Court’s panel members held divided opinions on the standards for a well-known trademark as spelt out in Article 30.1.11.

The internal debate focused on whether a well-known mark “should be one known to the public at large” or if a “general awareness of relevant consumers” is sufficient. At a standstill, the disagreement was brought to the Grand Chamber of the Supreme Administrative Court to reach a solution.

The Grand Chamber’s interpretation

In its review, the Grand Chamber of the Supreme Administrative Court made its interpretation based on analyses of relevant domestic and international regulations.

The chamber referred to the “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks”, published by WIPO in September 1999. This states that deciding whether the reputation of a trademark should reach awareness among the public at large or relevant consumers to gain well-known status shall be determined by individual member countries, which must assess the possible dilution of registered marks.

The chamber further stated that Article 30.1.11’s assertion 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 also a prerequisite for the dilution of a well-known trademark. Accordingly, the ‘well-known trademark’ referred to in both the former and latter parts of Article 30.1.11 of the Trademark Act should have the same definition.

Additionally, it found that, according to Article 31 of the “Implementation Rules of the Trademark Act”, establishing a reputation requires objective evidence proving that the registered trademark in question is widely known to the relevant industries or consumers. Consequently, the definition of ‘well-known trademark’ referred to in both the former and latter parts of Article 30.1.11 of the Trademark Act should not vary.   

Lastly, the chamber stated that 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 (ie, 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, a level of awareness among relevant consumers suffices.

Based on these analyses, the Grand Chamber of the Supreme Administrative Court ruled that a trademark owner needs only objective evidence that their mark is widely known among relevant industries and consumers to meet the ‘well-known’ definition featured in Article 30.1.11. This decision eliminates the need for such marks to reach a higher level of awareness within the public at large in order to be at risk for dilution of character or reputation. 

Impact of the decision

The Grand Chamber of the Supreme Administrative Court’s unanimous legal interpretation transforms longstanding practices in Taiwan.

Moving forward, trademarks in the country must only garner demonstrable awareness among “relevant consumers or businesses” instead of “the public at large”.

However, a case-by-case assessment of the risk of dilution to the distinctive character or reputation of a well-known mark is still needed, considering factors such as:

• the degree of similarity between trademarks;
• the degree to which the trademark is commonly used on other goods and services;
• the inherent or acquired distinctiveness of a well-known trademark; and
• whether the opposed mark owner intends to associate their mark with the well-known trademark.