Burberry's B&W Check Mark Held Non-distinctive, Court Decision on Burberry's Action Is Final And Conclusive.

Burberry Limited sued Taiwan IPO after unsuccessfully appealing the latter's disapproval of its application for registering its vintage check mark in black and white.  IP Court dismissed the action and Burberry brought the matter to the Superme Administrative Court (SAC) whose decision dismissing Burberry's appeal is final with binding effects. (Supreme Administrative Court ruling of 11 April 2013, case 102-Cai-443; IP Court Administrative Judgment of 10 January 2013, case 101-Xing-Shang-Su-136.)

Burberry's registered vintage pink and pastel blue check mark is well recognized as symbol of luxury and trendiness.  The Burberry check mark in black and white is also registered in various countries over the past 18 years but not this time in Taiwan.

In its action against Taiwan IPO, Burberry argues that its well-known vintage check mark has been in use for more than 140 years in the brown, red, black colors as well as the pink-and-pastel blue and black-and-white color schemes.  According to Burberry, the proposed mark in simple black and white has checks contoured with thin and thick black lines with four white blocks within was put into use in 2008.  By the application in issue, Burberry sought to register the proposed mark for use on goods covering fragrances, cosmetics, eyewear, scarfs, fabric and clothes.  Burberry further contends that with products being distributed every day under the proposed mark through Burberry's special stores, 444 in total, and over 1,100 boutiques and department stores all over the world, the proposed mark is widely recognized as distinctive and that Taiwan IPO's denial of its application for registering the mark is unwarranted because the mark has been approved of registration in the UK, USA, EU, Japan and WIPO.

Taiwan IPO on the other side of the case maintains that the photos presented by Burberry show that most of the BURBERRY products sold through the special counters at local department stores bear the Burberry check mark in various colors as opposed to the very few items bearing the proposed mark in black and white.  The information on the distribution and sales of the BURBERRY products presented by Burberry does not sufficiently prove that the proposed mark has been used extensively in Taiwan.  The proposed mark is a mark in simple black and white and should it be approved of registration, Burberry would be given the right to exclude all others from using the check pattern in all color schemes.  In consideration of the common use in Taiwan of check patterns varied in size and color scheme for ordinary decoration purposes in Taiwan, Taiwan IPO decides that allowing registration of the proposed mark will prejudice the local trades' right to fair use of decorative check patterns to dress their commodities.

The IP Court finds that regardless of the high sales of the BURBERRY products distributed under the proposed mark in foreign countries, Burberry has produced no positive evidence to establish long-term extenstive use of the proposed mark in Tawian.  Moreover, trademark regime is territory-oriented system where the approval of registration of a mark by one country does not automatically lead to that of the same mark by another.  After putting the proposed mark to the acquired and unacquired distinctiveness tests and taking into account the principles of territoriality and sovereignty of protection of trademark, the IP Court finds the proposed mark unregistrable pursuant to subparagraph 3 of paragraph one and paragraph two of Article 29 of the Trademark Act.  On Burberry's appeal, the SAC upholds the IP Court's decision and Burberry's appeal is held untenable and dismissed accordingly.  (2013.04)
/EMA