Discussion on the Protective Range of Well-Known Trademark in Taiwan

Decision of Beijing Higher People’s Court Administrative Lawsuit in 2016, Case No. 349:

Automobili Lamborghini S.p.A., an Italian brand symbolizing richness, is one of the manufacturers of top luxury sports cars and SUVs in the world. The “fighting bull”mark has a worldwide reputation. A Chinese company filed a trademark utilizing similar fighting bull mark and applied the trademark to insurance, banking, financial services, art price assessment, real estate agency, brokerage, guarantee business, charity fundraising, trust activities, pawning service, etc. SIPO (State intellectual property office of the P.R.C.) rejected the opposition of Lamborghini against this “fighting bull” trademark application. Lamborghini disagreed with the decision of SIPO and appealed to Beijing Higher People’s Court. The Court held that "The use on designated services or goods of the opposed trademark is not the same or similar to the use of Lamborghini’s “fighting bull” reference mark. The purposes of the opposed trademark is not for some or all the same goods or services as Lamborghini’s “fighting bull” trademark designates. For this reason, Beijing Higher People’s Court rejected all Lamborghini’s claims.

Issue

What if Lamborghini argues that their trademark is a well-known trademark? May the use of this “fighting bull” trademark apply to insurance and financial service?

Analysis

Per Article 13, Clause 3 of the Chinese Trademark Law, “Where a mark is a reproduction, imitation, or translation of a third party's well-known trademark that has been registered in China in respect of different or other types of goods, which may mislead the public and damage the interests of the registrant of the well-known trademark, such mark shall not be registered and shall be prohibited from being used.”

The Supreme People’s Court states that unregistered well-known trademarks should also be protected. The rights of registered well-known trademark can be expanded to dissimilar services or goods. However, if the rights of registered well-known trademark limitlessly expand, it might affect other business enterprises and waste judicial resource.

In accordance with this case, even though Lamborghini claims that their trademark is well-known, the extent of designated goods/services of well-known trademarks cannot be expanded to irrelevant goods/services.

Conclusion

It takes considerable money, effect, and time to have a trademark become a well-known one. To protect a well-known trademark from being misappropriated and to prevent others from free-riding on the reputation and distinctiveness of such well-known trademark, it is necessary to provide effective protection for well-known trademarks.

In order to give thorough protection for trademarks, an applicant shall notice that trademark rights exclude others from selling similar goods/services. Trademark rights have no enforceability on totally irrelevant goods/services, and well-known trademarks are no exception.

A better way to protect trademarks comprehensively is to register copyright for the text or image contained in the trademark with the National Copyright Administration of China.