Audrey Liao Clair Y. W. Gao July 4 2022 Can event sponsorship serve to establish a trademark's well-known status? Lee and Li Attorneys at Law | Intellectual Property - Taiwan Audrey Liao, Clair Y. W. Gao Intellectual Property IntroductionDo the courts allow event sponsorship as proof of a trademark's well-known status?Building evidence to show that trademarks are well knownCommentIntroductionWith enthusiasm for the Beijing 2022 Winter Olympics growing, the highly anticipated football World Cup 2022 will be held in Qatar by the end of the year. While athletes giving their all on behalf of their country will no doubt be in the spotlight, advertising boards in sports venues displaying various major global brands as sponsors often become a competitive highlight besides the athletic one."Event sponsorship marketing" is a brand marketing approach by which a business funds a social event or a cultural or sports competition that is in the public interest or has entertainment value. Not only does it help to shape a business's corporate and brand image, but the business gains the opportunity to have their brand or goods seen by consumers residing in an extensive scope of area through various activities and competitions tuned in by tens of millions, or even billions, of consumers worldwide, at a relatively low expense. With this approach, a business is able to implant a positive image of its brand deep in the minds of consumers. When consumers identify with a sponsor's brand, the extent to which consumers are willing to purchase goods bearing the brand will be greatly enhanced. The effect of such advertising is far greater than that achieved by any conventional advertising methods such as print media or television.The aforementioned benefits show that event sponsorship marketing in today's society has become a trend, a marketing approach indispensable to various major brand or business owners. Sponsoring is no longer simply giving money. In order to make advertising highly effective and foster customer-brand identification, major brand or business owners prudently select competitions or activities that suit their products when making sponsorship decisions. For instance:sportswear providers sponsor large-scale sports competitions;businesses making nutritional supplements mostly sponsor charitable activities relating to medicine and healthcare; andjewellery makers and cosmetics brands often sponsor fashion weeks.By sponsoring activities and competitions that share similarities in the nature of the product offered and overlap in customer base, brands achieve the advertising and marketing goal of extensively getting consumers to recognise their brands and goods. This constitutes the core objective of business owners' sponsorship of activities and competitions.Do the courts allow event sponsorship as proof of a trademark's well-known status?In trademark litigation practice, event sponsorship is supposed to be a useful tool in establishing a trademark's well-known status. However, administrative judgments rendered by the Intellectual Property and Commercial (IPC) Court over the years have mostly rejected event sponsorship as evidence of a trademark's well-known status, primarily for the following reasons:A competition or event that takes place in another country may not necessarily be known to domestic consumers.There remains doubt as to whether the trademark in question will be seen by domestic consumers even if they do view a sponsored competition or event taking place in another country.In the course of event sponsorship, the brand is not shown in conjunction with its designated goods before consumers. Therefore, a branded trademark shown in the sponsored competition or event only conveys to consumers the impression of a sponsor's trademark. Consumers have no way of knowing what the goods symbolised by such trademark are.The IPC Court's stance means that business owners who dedicate money, time and effort to accumulate brand recognition and identification through sponsorship for marketing purposes are unable to enjoy the fruits of their endeavours – namely, brand protection. As such stance affords a less than satisfactory protection of brands, whether it is proper and just is questionable.Building evidence to show that trademarks are well knownConsumer knowledge of trademarkArticle 30-1(11) of the Trademark Act provides the following:A trademark may not be registered in any of the following circumstances: (11) The trademark, being identical or similar to another's well-known trademark or mark, causes a likelihood of confusion or misidentification by the relevant public.The determination of whether a trademark is "well known" – as elucidated by the Examination Guidelines for the Protection of Well-known Trademarks under article 30-1(11) of the Trademark Act – shall be based on the perception of domestic consumers. However, even if a trademark has never been used domestically or its actual domestic use is not extensive, it can still be deemed well known if there is objective evidence to show that the fame of the trademark established through extensive use in other countries has reached Taiwan.According to the Examination Guidelines for the Protection of Well-known Trademarks, "objective evidence" shall include:invoices, distribution documents and import/export documents for goods or services bearing the branded trademarks;particulars such as sales figures and market share of the goods or services; anddomestic and foreign advertising materials from the mass media (eg, newspapers, magazines and television) including information as to:the size of the ads;the amount of money spent on advertising;the volume of advertising; andevidentiary materials (eg, applications for placement of ads, records of TV commercials and ads on the sides of buses, at bus stops, at stations, on highway billboards, on store signboards and on roadside billboards).While such evidence does not directly show the use of the trademark at issue on its designated goods or services, the trademark may be deemed domestically well known as long as the evidence is sufficient for domestic consumers to recognise and know of the fame established by the trademark through its extensive use in other countries.Therefore, the key to whether a trademark is well known is whether it is known to domestic consumers, not whether the mark has been actually put to domestic use.Goal of event sponsorshipEvent sponsorship is an advertising method by which various major brand or business owners sponsor competitions or activities that suit their products to achieve the goal of extensively getting consumers to recognise their brands and goods. These brand or business owners and the activities they sponsor have overlapping audiences or consumers. To attract their attention, brand or business owners will as a matter of course attempt to publicise their brands and goods as much as possible by simultaneously displaying their branded trademarks and main line of products on the advertising boards they sponsor, or handing out product samples bearing their branded trademarks during events. With coverage and broadcasting by media outlets in various countries, brand or business owners can actively distribute press releases in target markets and countries. Such endeavours will then be sufficient for the relevant consumers located thousands of miles away to learn about the brands and goods of sponsors.CommentIf corporate sponsors can submit evidentiary materials deemed objective evidence as provided in the Examination Guidelines for the Protection of Well-known Trademarks to prove that the competition or event held in other countries sponsored by brand or business owners have been covered by major or several domestic news outlets, it shall be deemed that such competition or event held in other countries is known to domestic consumers.In the meantime, if other appropriate, objective evidence is submitted as well, the court should conclude that the relevant domestic consumers can see the business owner's brand via broadcast or media coverage and get to learn about the goods symbolised by the brand. Such evidence might include:a screenshot of the event's domestic broadcast in which the brand or business owner's trademark and goods are displayed;a domestic press release for the competition or event held in other countries sponsored by the business owner in which the sponsored brand and branded goods are mentioned; ora photo showing the event along with the sponsoring brand and branded goods,Such conclusion can meet the trend of marketing the brand by event sponsorship by brand or business owners and can protect well-known trademarks.For further information on this topic please contact Audrey Liao or Clair Y W Gao at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.