Judicial Standard for the Well-Knownness of Trademarks in the Hotel Industry under the Case Law of the Taiwan Intellectual Property Court

This article is intended to explore the judicial standard for the well-knownness of trademarks in the hotel industry based on the decisions issued by the Taiwan Intellectual Property Court ('TIPC'). The decisions relate to two internationally-famous hotels: Amanresorts International Pte Ltd. and Four Seasons Hotels (Barbados) Ltd. While the trademarks of both hotels are considered as well-known in the hotel industry by the TIPC, Amanresorts acquires more extensive protection than Four Seasons. The key issue is whether the owner of a well-known trademark intends to enter the business sectors other than what the well-known trademark is designated to. In the Amanresorts case, Amanresorts successfully requested the TIPO to revoke one registered trademark which uses 'aman.' The revoked trademark was designated to architectural design services. The TIPC affirmed the TIPO's ruling because Amanresorts has used 'AMAN' for its real estate business. Whereas, in the Four Seasons case, the TIPC affirmed the TIPO's denial of the revocation of a trademark requested by Four Seasons because the challenged trademark was designated to gardening services which Four Seasons was found to have no intent to enter into. Comparing both cases, the key implication could be that a hotel has to extend to other business sectors so as to acquire a well-protected well-known trademark.