The British luxury fashion company Burberry Limited (the Burberry) launched an administrative lawsuit against the Taiwan Intellectual Property Office (TIPO) for the refusal of a trademark registration application for its classic check in black & white, under the name of "BURBERRY CHECK (Black & White)". On April 11, 2013, the Supreme Administrative Court determined in a final rule against the Burberry under the ground of non-distinctiveness of the mark at issue.
The conventional common Burberry check is a classic check in multiple colors, which is registered in Taiwan, shown as in the Figure 1; But besides checks in multiple colors, the check series designed by Burberry also include a check in black and white:
Click here to view Figure 1.
This time, Burberry applied for trademark registration for the classic check in black and white. Refer to Figure 2 for the aspects of usage:
Click here to view Figure 2.
Being a well known brand over the years, Burberry's classic color check has registered as a trademark all over the world, such as the Taiwan trademark registration No. 00959242, and the US registration Nos. 4123508 and 3529814; whereas the black and white check also began its worldwide trademark registration application since 1995, but was refused in Taiwan.
The grounds for the TIPO's refusal after examination are as follows:
- Most Burberry products sold at department stores in Taiwan are of color checks, they are seldom of black and white check;
- Burberry claims to be granted a registration for a check with any color, which, if approved for registration of the black and white check by the TIPO, would compromise the space of reasonable use by peers in this industry and the freedom of using for decoration on goods due to a too wide scope of claims.
Reasons proposed by Burberry for answering the above challenges are as follows:
- The fact of long term usage: Burberry has been using its classic trademarks for over 140 years, with its products sold in 444 direct-sale stores and 1,100 department stores around the world. The BURBERRY CHECK series are classic to the consumers and are well-known trademark with distinctiveness since a long time ago;
- Trademark registration approved by other countries: In 2008, Burberry applied for trademark registration for its black & white check pattern, designated for goods such as perfumes, cosmetics, glasses, scarves, cloths and dresses, which is formed by simply repeated continuous crossing of thick and thin vertical and horizontal black lines, representing four white blocks in the overlapping areas. Before that, Burberry's trademark of black & white check has been approved for registration in the UK, US, EU, Japan and other countries.
- Specific usage aspects: besides the arrangements of brown, red and black, there are combinations of pink, powder blue and black & white as well. Check of black and white was reported by a world famous fashion magazine, and has distinctiveness to the consumers.
The grounds of the Supreme Administrative Court for ruling against Burberry are:
- Most of goods shown by Burberry are products with color trademarks, and the Burberry products with the pattern of black & white check are relatively minority and lack of distinctiveness; and Burberry failed to demonstrate that the black & white check was widely used in Taiwan.
- The goods with the pattern of Burberry black & white check are not familiar for the general consumers, and commercially, they are not able to be recognized as an operational service identity mark.
- Various countries across the world adopt the principle of territoriality for trademark protection. Taiwan has a choice whether or not to follow the practice of other countries.