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Criteria for Determination of a Famous Trademark |
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You see “OMEGA” in most Olympic Games events. You must know that “OMEGA” refers to a brand of watches. No doubt exists that “OMEGA” is a famous mark in the field of watches and timepieces. Would inferring infer that the “OMEGA” mark used on other articles or services can also be deemed to be a well-known mark? The following case will give you an answer.
Facts:
Nichias Corp., a Japanese company, (hereinafter referred to as the “Applicant”) obtained “OMEGA” trademark registration in International Class 19 for plastic floors and floors for construction use, as Reg. No. 878761 on January 1, 2000. Hopewell Plastic Laminates Limited, a Hong Kong corporation, (hereinafter referred to as the “Plaintiff”) raised an Invalidation Action against Reg. No. 878761 on October 3, 2002 to cancel its registration. The Plaintiff claimed that the referenced mark violated Article 37-7 and 37-14 of the Trademark Law (1997) because the Plaintiff first used the “OMEGA” mark on plastic laminates and has a significant fame in the trade, and the Applicant, knowing of the Plaintiff’s use of the “OMEGA” mark in Hong Kong, registered the mark in Taiwan without the Plaintiff’s consent. The Intellectual Property Office (TIPO) decided the action in favor of the Applicant. The Appeal in the Ministry of Economic Affairs was overruled. Then, the Plaintiff filed an Administrative Suit in the Taipei High Administrative Court.
Nature of the Dispute:
The subject Invalidation Action was initiated on October 3, 2002. At the time, the current Trademark Law had an effect date of November 28, 2003. The subject Invalidation Action was not yet finalized. Therefore, according to the provisional regulation, to determine whether the referenced trademark should be cancelled or not, both the cited articles of the current Trademark Law and the previous Trademark Law (1997) were applied.
Could the Plaintiff’s mark be deemed famous? (Article 37-7 of the Trademark Law (1997) and Article 23-I-12 of the current Trademark Law)
Without regard to any contractual or business relationship between the Applicant and the Plaintiff, the Applicant registered the referenced mark without the Plaintiff’s consent? (Article 37-14 of the Trademark Law (1997) and Article 23-I-14 of the current Trademark Law)
Reasons:
The Plaintiff’s predecessor adopted “OMEGA” in 1980 for use on plywood plastic laminated sheets and registered it in Hong Kong, the PRC, Israel and the U.S.A. On October, 1998, the Plaintiff learned that a third party in Hong Kong was suspected of infringing the “OMEGA” mark and sent a cease and desist letter to said company. In the responding letter, said party indicated that NICHIAS CORP, a Japanese company, provided said products. Subsequently, NICHIAS CORP sent a letter to the Plaintiff stating that they realized the “OMEGA” mark was the Plaintiff’s property and they expected both parties to use the mark in Hong Kong. However, the Applicant filed the subject application on December 9, 1998, during an ongoing negotiation. The Plaintiff provided promotional materials of its use of the “OMEGA” mark and some exhibition information to prove its fame.
In the Invalidation Decision, the Intellectual Property Office (TIPO) held that “OMEGA,” one of the Greek alphabets, not created by the Plaintiff, was adopted and registered by different proprietors in variety classes. The Plaintiff did not provide any promotional material in Taiwan. The quantity of its use in Taiwan is not substantial. Thus, concluding that the based mark is well known to general consumers in Taiwan is difficult. Article 37-7 of the Trademark Law (1997) and Article 23-I-12 of the current Trademark Law shall not be applied in this case.
Regarding the Applicant’s trademark, the Applicant indicated in their letter in reply to the Plaintiff that they had registered “ニチアスホメガフロア (Nichias Omega Floor in Japanese letters)” in 1988. Therefore, they have the right to use “OMEGA” in Japan and want to co-exist with the Plaintiff’s mark in other countries. Based on said registration, no grounds exists to say that the Applicant’s registration of the subject mark in Taiwan did plagiarize the Plaintiff’s mark and violate Article 37-14 of the Trademark Law (1997) and Article 23-I-14 of the current Trademark Law.
Comments:
TIPO has established some criterion for examination, among which include “Main Points for Determining a Well-Known Trademark or Mark.” To determine whether a trademark or mark is well-known in Taiwan, the subject trademark or mark owner should provide relevant documents to prove its use not only in depth but also in width. The following evidence can be submitted to prove it:
(1) invoices, marketing documents, import/export documents and sales figures for the goods and/ or services;
(2) advertisements in domestic or foreign mass media, such as newspapers, magazines or television;
(3) documents relating to the arrangement of the sales outlets, channels of trade or locations for the goods or services;
(4) appraisal of the trademark or mark in the market, ranking in the sales figures, ranking in the advertising expenditures;
(5) proof showing the time when the trademark or mark was created and used and proof showing continued use of the trademark or mark;
(6) documents showing registrations of the trademark or mark in and/or outside Taiwan, including registrations made by an affiliate;
(7) relevant evidence or market survey reports issued by a credible organization;
(8) documents showing relevant recognition made by an administrative or judicial authority; and
(9) any other proof of the well-known status of the trademark or mark.
According to TIPO’s practices, determining a well-known trademark or mark should be on a case by case basis. However, the trademark proprietor does not need to submit all relevant documents if its mark has been declared well-known through a trademark contentious decision.
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