SAC confirms that lingerie mark may dilute DARJEELING certification marks

On December 8 2011 the Supreme Administrative Court dismissed Delta Lingerie's appeal against a decision of the Intellectual Property Court in which the latter had cancelled Delta's word mark DARJEELING (Registration 1109052) for goods in Class 25 of the Nice Classification. The lower court had found that the mark was likely to dilute the distinctiveness of the certification marks DARJEELING and DARJEELING (and woman design), depicted below, which are owned by the Tea Board of India

Therefore, the decision of the Intellectual Property Court did not violate any laws and the appeal was not justified.

The decision of the Intellectual Property Court was based on the following grounds:
  • The opposed trademark was highly similar to the certification marks.
  • Certification marks are not used to denote a single business entity; instead, they are used by multiple parties which have satisfied the conditions for using the marks on their goods or services. The owner of the certification mark is not the only party that is allowed to use the mark on the relevant goods or services. The evidence required to prove the well-known status of a certification mark includes not only material showing use by the trademark owner to promote the certification mark, but also material showing use of the mark by third parties (ie, licensed users) on relevant goods and/services, as well as advertisements and marketing materials. Therefore, the evidence submitted by the Tea Board was sufficient to prove that the DARJEELING certification marks were well known in Taiwan before July 17 2003 (the filing date of the opposed trademark).
  • The DARJEELING certification marks were not commonly used by third parties on other goods and/or services and were quite distinctive.
On appeal, Delta argued as follows:
  • The evidence provided by the Tea Board was insufficient to prove the well-known status of the certification marks, as most of the documents were not dated or post-dated the filing date of the opposed trademark. Only five documents could serve as proof of use of the certification marks.
  • Even assuming that the certification marks are well known in Taiwan, these marks are famous only among the relevant businesses and consumers. Their fame does not extend to the general public.
  • 'Darjeeling' is a geographical indication under the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). A court in India, the country of origin of the Darjeeling tea, had held that the geographical indication 'Darjeeling' is not protected for goods or services other than those relating to tea. Therefore, according to Article 24(9) of the TRIPS Agreement, there was no obligation to protect the geographical indication 'Darjeeling' for goods other than tea. As such, all World Trade Organisation member states, including Taiwan, should not grant exclusive rights to the geographical indication 'Darjeeling' in respect of goods other than tea.  
However, the Supreme Administrative Court rebutted Delta's arguments, holding as follows:
  • The Intellectual Property Court had stated that local restaurant chains, food companies and online shopping websites, among others, sold tea products under the DARJEELING certification marks; in addition, information about the Darjeeling products was available on the relevant websites. Considering that the Tea Board has sought to promote the DARJEELING marks before the filing of the opposed trademark, it could be ascertained that the certification marks were known to local businesses and consumers and had become substantially well known before the filing date of the opposed trademark.
  • The term 'well known' in Article 23-1(12) of the Trademark Act refers to a trademark which can be proved to be commonly recognised by the relevant businesses or consumers. A well-known trademark may be diluted only if it has a higher degree of distinctiveness; however, the application of the dilution article does not require that the trademark be commonly known by local consumers.
  • The dispute concerned whether the registration of the opposed trademark violated Article 23(1)(12) of the Trademark Act, which was a different issue from whether the Tea Board's mark had acquired protection as a geographical indication.
Joseph S Yang, Lee and Li, Taipei

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