Burberry rejected signature print trademark in Taiwan

On April 11, 2013, the Supreme Administrative Court determined in a final rule against Burberry, under the grounds of non-distinctiveness of the mark at issue. This is because their famous black and white check pattern is, according to the Taiwan Intellectual Property Office, not distinctive enough for its own trademark; although Burberry’s trademark of black & white check has been approved for registration in the UK, US, EU, Japan and other countries.

The reasons the Taiwan Intellectual Property Office refused the trademark are as follows:

1. Most of goods shown by Burberry are products with colour 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.
2. 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.
3. 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.

The luxury British fashion company, Burberry Limited, began an administrative lawsuit against the Taiwan Intellectual Property Office, because they refused a trademark registration application for its world-renowned classic check pattern in black & white, under the name of “BURBERRY CHECK (Black & White)”.

Consequently, Burberry’s appeal is currently pending review, but it does not seem likely or optimistic for the luxury British fashion house to receive their classic trademark. 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 main reason they have been denied is simply that their multi-million, world-famous; yet simple, black and white, check print was considered too “non-distinctive”.

Shiona Marsh