TIPS^®  Taiwan Intellectual Property Special

Dispute between Taiwanese Textile Industry and Burberry Limited

In mid-June this year, Local attorneys in Taiwan on behalf of Burberry Limited, England requested that Taiwanese Textile manufacturers stop manufacturing and selling cloth similar to its trademark device. Taiwanese Textile Industry Association requested legal opinion from the Taiwan Intellectual Property Office (TIPO).

The TIPO responded that Burberry Limited owns the trademark of BURBERRYS CHECK. The distinctiveness of the BURBERRYS CHECK was based on the acquisition of secondary meaning by use in commerce over long period of time. Therefore, the manufacturer should avoid use of BURBERRYS CHECK on the designated goods of the mark that may cause consumer confusion. However, the designated goods for BURBERRYS CHECK are handbags, clothing, and etc, and cloth is not included. The design on the cloth manufactured by Taiwanese textile manufacturers is only for aesthetic purpose, not for trademark purpose. If the manufacturers do not intend to use the design to indicate the origin of cloth and consumers do not recognize the design as a trademark, use of the design will not infringe Burberry’s trademark rights.

The TIPO further indicated that “BURBERRYS CHECK” became a indication of Burberry products by long term continuous use and promotion by Burberry Limited. If the distinctiveness was acquired by the combination of product design and long term use, similarity of others’ use should be determined by how the device is used in specific products. The explanatory statement from TIPO indicated that Taiwanese manufacturers did not infringe Burberry’s trademark rights. Therefore, the Taiwanese Textile Industry Association will forward the response of TIPO to member manufacturers for negotiation with Burberry Limited.