TIPS^®  Taiwan Intellectual Property Special

Junior Famous Mark Defeated in Trademark Registration under

“First-to-File” System

In 1997, Valentino Globe B.V. applied to register the mark “V (Logo) & VALENTINO BOUTIQUE 華倫天奴” (as the next page), used on clothing in International Class 25. The registration was approved by the TIPO.


Valentino’s Mark at issue

A domestic manufacture, who had been using similar marks on the similar goods filed an opposition, citing 2 registered trademarks, ®398030 and ® 167024 (see below).

®398030 ® 167024

The Registrant, Valentino Globe B.V., claimed that VALENTENO and the V Logo are famous marks well-known to customers and the status of being famous has been confirmed by the Administrative Court in Pan-2428 Judgement. Valentino alleged that the cited mark imitate the design of Valentino’s famous V Logo. On the other hand, despite the V Logo, Valentino’s mark at issue can easily be distinguished from the cited marks remaining portion of respective marks. The overall appearance of the marks is distinguishable. Valentino believed as a well-known mark that is widely used, the mark at issue should be able to indicate the origin of the Valentino products and should not cause likelihood of confusion.

However, the Taipei High Administrative Court (THAC)’s decision on October 31 held a different view from Valentino’s. The THAC found that, although there are some other portions of the marks that are different from each other, the V Logos, which constitute the major portion of the marks, are all the same. When separately observed in different places at different time, the marks may mislead the ordinary consumers to believe that the goods of the same serial marks are from the same origin, and therefore cause likelihood of confusion. As for whether the V Logo of the cited mark is made from imitating Valentino’s famous V Logo, it is not a question to be resolved in a trademark opposition proceeding because Trademark Law in Taiwan adopts the principle of “first-to-file.”