Taiwan - The Subject Mark “ FERRARI” Is Not Registerable Due To Likelyhood To Dilute The Distinctiveness Of The Well-known Mark “ FERRARI”.

Legal News & Analysis - Asia Pacific - Taiwan - Intellectual Property

9 May, 2019

 

The application filed by Ferrari Group Ltd. (a U.K. company) for registration of the mark  on “personal body guarding, safeguard, etc.”, which includes the letters “FERRARI”, was rejected by TIPO by virtue of the latter part of Article 30-I-(11) of Taiwan Trademark Act on the ground the mark at issue is likely to dilute the distinctiveness of the series of “FARRARI” marks owned by the Italian company, Farrari S.P.A. 

 

The applicant’s administrative appeal was also denied by the Ministry of Economic Affairs (“MOEA”). 

 

The MOEA ruled as follows:

 

(1) Based upon the evidences of the extensive registration and use of the cited mark “FERRARI” before the subject mark was filed for registration, it is sufficient to conclude that the cited mark has been widely known to the relevant businesses and consumers and has become a highly well-known mark.  

 

(2) Although the marks are composed differently, namely one with a bird design and the other with a horse design, the element or word to be called and recognized when trading is the identical word “FARRARI”, which would easily lead the consumers to associate the marks with each other as series marks;

 

(3) The cited mark “FARRARI” is not a common letter combination and has been extensively distributed and used by its owner, making it a highly distinguishable, well-known trademark.  

 

(4) All the previously registered and validly existing “FARRARI” series marks in Taiwan are owned by the proprietary owner of the cited mark.  Therefore, “FARRARI” has not been widely registered and use in Taiwan by any other parties on different goods or services. 

 

If the subject mark is allowed to register and commonly used in the future, it is likely to dilute or weaken the distinctiveness of the cited well-known mark or the single source perception. 

 

Accordingly, the subject mark was not allowed for registration.

 

 

For further information, please contact:  

 

Jay You, Tsar & Tsai Law Firm

law@tsartsai.com.tw