Taiwan’s IP Court ruled that consumers would not confuse “GIOVANNI VALENTINO” with “VALENTINO”

This case pertains to a long dispute between “GIOVANNI VALENTINO” and “VALENTINO.”

A. Background:

About 10 years ago, the trademark holder for “VALENTINO”, Valentino S.P.A. (“Valentino”), filed numerous challenges against the then owner of “GIOVANNI VALENTINO” trademarks, Florence Fashions (Jersey) Limited (“Florence”), alleging, among the others, that the similarity between Florence’s “GIOVANNI VALENTINO” (Reg. No. 1154031, 1154174, 1141358, 1156129, and 128109) and Valentino’s “VALENTINO” would cause confusion among the consumers (see below). 

	Florence’s Opposed Trademarks	Valentino’s cited trademarks
1	（Reg. No. 1154031）	（Reg. NO. 429221）
2	（Reg. No. 1154174）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, and 929395）
3	（Reg. No. 1141358）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311, 929395）
4	（Reg. No.1156129）	（Reg. No.446037, 358389, 410686, 429221, 434569, 430311, 929395）
5	（Reg. No. 128109）	（Reg. No. 446037, 358389, 410686, 429221, 434569, 430311）

Valentino’s aforesaid oppositions resulted in a series of court’s decisions, which were not in Valentino’s favor, for the then Taipei High Administrative Court (“THAC”) and the Administrative Supreme Court (“ASC”) held that the word “Valentino” was a common Italian name that has been widely used by other trademark registrants. As such, the THAC and ASC ruled that “Valentino” should have relatively “thin” exclusivity, and that there would be no confusion caused.

B. The New Dispute:

On May 3, 2017, another trademark application for “GIOVANNI VALENTINO” was filed by Annabella Valentino, the legal representative of Florence, and was applied for use in goods under Class 25, including various kinds of suits, underwear, pajamas, shorts, skirts, shirts, shoes, socks, sportswear, women’s blouses, jeans, coats, and jackets. The trademark application was then assigned to Yunix International Corp. (“Yunix”), and later granted as trademark Reg. No. 1920306 (see below) on June 16, 2018.

Valentino again filed opposition based on its “Valentino” series trademarks (see above), citing violation of Article 30.1.10 and 30.1.11 of Trademark Act. In its opposition, Valentino cited a new ASC decision backing its argument that although “Valentino” is a common Italian name, it has become a well-known trademark and thus is still likely to be confused with other trademark that also uses “Valentino” in similar goods. However, the IP Office (IPO) and the Appeal Board both rejected Valentino’s claim. Therefore, Valentino filed complaint with the IP Court (IPC), demanding Yunix’s “GIOVANNI VALENTINO” trademark be cancelled.

C. IP Court's decision:

The IPC entered decision on November 30, 2020, affirming the determination made by the IPO.

1.    With regard to Article 30.1.11

1)    Article 30.1.11 provides that a trademark shall not be registered if it is similar with a well-known trademark that may cause confusion among the relevant public, or may damage the distinctiveness or reputation of said well-known trademark.

2)    Here, the IPC affirms that Valentino’s alleged trademarks have become well-known, but only within the fields of goods that the trademark “Valentino” has been put in use. In other words, “Valentino” may be famous among the “relevant” consumers, but not so among the general public.

3)    As to similarity, the IPC notes that there are other elements like “GIOVANNI” and the green backdrop adopted in Yunix’s “GIOVANNI VALENTINO” trademark. With such difference in mind, the degree of similarity between Yunix’s “GIOVANNI VALENTINO” and Valentino’s “VALENTINO” is medium.

4)    As to likelihood of confusion, Valentino argues that there might be confusion in view of the similarity found in Yunix’s trademark and its designated goods. IPC disagrees, and rules in Yunix’s favor because “GIOVANNI VALENTINO” and “VALENTINO” have been co-existing for more than 10 years. The long period of co-existence without evidence of actual confusion makes Valentino’s arguments unpersuasive.

5)    While Valentino also argues that distinctiveness of “VALENTINO” may be diluted due to registration of Yunix’s “GIOVANNI VALENTINO”, the IPC rules that dilution theory is not applicable, because Valentino’s trademark is only famous within the relevant consumers, and has not reached the level of being well-known among the general public.

2.    With regard to Article 30.1.10

1)    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such mark is similar with a senior mark and is applied for use in similar goods or service, so that there exists likelihood of confusion among the relevant consumers.

2)    While “GIOVANNI VALENTINO” is similar with “VALENTINO”, and applied for use in similar goods, the IPC finds co-existence for more than 10 years without evidence of actual confusion tilts to the favor of Yunix. Valentino contends that there are other court decisions which hold the view that “VALENTINO” being a common Italian name could still be highly distinctive and be awarded with greater protection. The IPC acknowledges that these decisions support Valentino’s position, but opines that they are not enough to outweigh the finding that “VALENTINO” and “GIOVANNI VALENTINO” have been co-existing for more than 10 years without evidence showing consumer’s confusion. Besides, Yunix's “GIOVANNI VALENTINO” looks exactly the same as Florence's previously opposed “GIOVANNI VALENTINO” trademark, which the ASC already held consumers would not be confused with Valentino's trademarks. Thus, the IPC sees no reason to change the  previous position taken by ASC, and finds that consumers would know how to distinguish the two trademarks since they have been co-existed for such a long time.

In view of the above, Valentino’s request to cancel the newly filed “GIOVANNI VALENTINO” trademark is denied. 

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,109%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c56%2c20201130%2c2