Lingerie mark likely to dilute DARJEELING certification marks

Taiwan

The Intellectual Property Court has annulled a decision of the Ministry of Economic Affairs (MOEA), holding that the registration for the word mark DARJEELING in Class 25 of the Nice Classification should be cancelled as it was likely to dilute the distinctiveness of the DARJEELING certification marks.

French company Delta Lingerie filed an application for the registration of the word mark DARJEELING (Registration 1109052) for "shirts, short pants, dresses, belts etc" in Class 25. On September 29 2004 the Tea Board of India filed an opposition based on its geographical certification marks DARJEELING and DARJEELING (and woman design), depicted below, under Articles 23-1(8), (9), (11) and (12) of the Trademark Act.


These provisions stipulate that a trademark is not registrable if:

  • it is identical or similar to the name, emblem, badge or mark of a well-known international organisation or well-known domestic or foreign institution;
  • it is identical or similar to a Chinese 'quality standard' mark or any local or foreign mark of the same nature;
  • it is likely to mislead the public as to the nature, quality or place of origin of the goods or services; or
  • it is identical or similar to another person's well-known trademark and is thus likely to cause confusion to the relevant public, or is likely to dilute the distinctiveness or reputation of that person's well-known trademark.

The Tea Board argued that, as 'Darjeeling' is a geographic name in India and a well-known geographical indication for black tea, the registration of the opposed trademark was likely not only to dilute the distinctiveness of the DARJEELING certification marks, but also to violate the cited articles. Therefore, the opposed trademark was not registrable.

The Intellectual Property Office cancelled the registration on the following grounds:

  • The opposed trademark was highly similar to the certification marks;
  • The certification marks were well known in Taiwan before July 17 2003 (the filing date of the opposed trademark);
  • The certification marks were not commonly used by third parties for other goods and/or services and were quite distinctive; and
  • The opposed trademark was likely to dilute the distinctiveness of the certification marks and should be cancelled under Article 23-1(12).

Delta Lingerie filed an administrative appeal with the MOEA, the administrative appeal authority. The MOEA found that the evidence submitted by the Tea Board was not sufficient to prove the well-known status of the certification marks, as they simply referred to the use of a geographic name or the generic use of a product name as a type of black tea. Even though Darjeeling tea was highly famous, it could not inevitably be inferred that the DARJEELING certification marks, which identified the place of origin of tea products, were commonly recognised by the general public. Therefore, Article 23-1(12) of the Trademark Act did not apply in this case. The MOEA cancelled the Intellectual Property Office's decision and requested that the office review the case to determine whether the other articles cited by the Tea Board could apply.

The Tea Board then filed an administrative action with the Intellectual Property Court. On April 28 2011 the court cancelled the MOEA's decision. It held that the DARJEELING certification marks were well known in Taiwan and that the registration of the word mark DARJEELING in Class 25 was likely to dilute their distinctiveness. The court found that the registration of the word mark should be cancelled based on Article 23-1(12) for the following reasons:

  • 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 DARJEELING certification marks were not commonly used by third parties on other goods and/or services and were quite distinctive.

Delta Lingerie can appeal to the Supreme Administrative Court.

Joseph S Yang, Lee and Li Attorneys at Law, Taipei

Get unlimited access to all WTR content