What’s in a name? Protection of famous names in Taiwan

In Taiwan, trademark protection is obtained through registration. The well-known name of an individual can, of course, be registered as a trademark and used as such in connection with the designated goods and services and preclude the unauthorized use of the same or similar famous name by another party. But what about the famous names of individuals that have not been registered as trademarks in Taiwan? Explicit protection is provided to famous names under Article 30 (1)(13) of Taiwan’s Trademark Act (the “Act”), which provides:
A trademark may not be registered in any of the following circumstances:

13. The trademark contains another person’s image or well-known name, stage name, pen name or pseudonym. This restriction shall not apply, however, if the other person has consented to the application for registration.

In determining whether a trademark is prevented from being registered under the Act on the basis of its similarity to a famous name, the Taiwan Intellectual Property Office (“the TIPO”) decides on a case-by-case basis whether

(a) the name is sufficiently well-known to the relevant consumers, and

(b) whether there is a likelihood of a mental association or confusion by the relevant consumers between the unauthorized mark and the famous name.

While the name must be well-known in Taiwan to be entitled to such protection, evidence to prove the name is famous from other jurisdictions can be provided to the TIPO to aid it in making its decision. Historically, the TIPO has required that the full name of the well-known person be used in order for Article 30 (1)(13) to apply. In some recent decisions, however, the TIPO has held that a mark that incorporates parts of well-known names can be denied registration on this basis, provided sufficient evidence can be produced to establish the two criteria above.

Is a Partial Name Sufficient for Protection under Article 30 (1)(13)?

In reviewing applications for trademark registration and deciding opposition actions, the TIPO will look to the inherent distinctiveness of the well-known name (or part thereof) as well as other factors to determine whether a likelihood of confusion or mental association may arise between the unauthorized registration containing the famous name and the famous name itself by the relevant consumers.  Other provisions of the Act require that the mark for which registration is sought creates a likelihood of confusion or a likelihood of dilution in order for the registration to be denied. Article 30 (1)(13), in contrast, does not mention either of these factors as an explicit requirement. In practice, though, the TIPO requires evidence that there is a likelihood of a mental association being formed by the relevant consumers between the famous name and the unauthorized mark which uses all or part of the famous name.

One of the first instances where the TIPO recognized the ability for an abbreviated famous name to be protected was a trademark opposition case in 2005 relating to the name “Beckham (貝克漢)”.[1] In that case, the TIPO canceled a trademark registration for the name “Beckham” on the basis that the purpose of this provision was to protect an individual’s inherent right to use of his or her own name and image, and to prevent a mental association being formed between the famous name and the unauthorized mark among the relevant consumers should the registration be allowed. The TIPO held that the name “Beckham”, despite being an abbreviation of the name “David Beckham (大衛貝克漢)”, was sufficiently globally-recognized and distinctive on its own so as to be afforded protection under the Act and therefore canceled the unauthorized mark.  A similar case in 2006 by the TIPO involved the cancellation of the registered mark “Tomford” on the basis of its similarity to the name “Tom Ford”, the well-known American fashion designer.[2] The TIPO again based its decision to cancel the registration on the need to protect an individual’s rights to his or her own image and name, and to avoid a mental association being formed between the famous name “Tom Ford” and the unauthorized registered mark “Tomford”.

In a more recent decision of the TIPO in 2014, which related to a well-known Japanese actress with the stage name “波多野結衣” (“Hatano Yui”), the TIPO held that incorporation of the name “波多野Hatano” into a trademark by another registrant who was not the individual or her authorized representative could be canceled.[3] This decision is another instance where the TIPO has recognized that an abbreviated name can attract the protection of Article 30 (1)(13) of the Act. The TIPO expressly stated that Article 30 (1)(13) is aimed at protecting the rights of individuals to his or her own name or image, or the right of another person to register the individual’s name with express consent.

The above decisions show that the TIPO is willing to apply Article 30(1)(13) of the Act to protect well-known names from unauthorized use in trademarks by others even in cases where only part of the well-known name is used.  Evidence will need to be adduced to establish that the name (in its entirety or the distinctive portion of the name), is well-known to the relevant consumers in Taiwan as the name of a famous individual. Evidence will also need to be submitted that shows the trademark creates a likelihood of a mental association being formed between the famous name and the unauthorized registration by the relevant consumers. Assuming that evidence supports these conclusions, the individual or their authorized agent can preclude others from registering a trademark that contains the well-known name under Article 30 (1)(13) of the Act.

[1] Trademark Opposition No. Zhong-Tai-Yi-G00930220: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=17407
[2] Trademark Opposition No. Zhong-Tai-Yi-G00940476: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=21673
[3] Trademark Opposition No. Zhong-Tai-Yi-G01020439: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=152290&rid=&Print=Y

Written July 21, 2015 By Peter J. Dernbach.