Although the plaintiff in a trademark infringement lawsuit did not substantiate actual confusions or misidentifications, still the likelihood of confusions and misidentification were shown in the results of a market survey commissioned to a market survey institution upon application by the defendant in this lawsuit (Taiwan)

Jane Tsai

The Plaintiff was the rights holder of the “臺北101” and “TAIPEI 101” series of trademarks (hereinafter, the “Opposing Trademarks”) and asserted in its complaint that the Defendant had applied for the trademark at issue, which was canceled after the Plaintiff’s opposition was upheld.  However, the Defendant infringed the Plaintiff’s Opposing Trademarks by continuing to use the trademark at issue for general retail and wholesale services for online trading platforms and registering the domain name “” to set up its website and operate its social media accounts.

The Intellectual Property Court rendered the 106-Min-Shang-Su-32 Civil Decision of April 16, 2018 (hereinafter, the “Decision”), holding that although the Plaintiff had not substantiated actual confusions or misidentifications among relevant consumers about the Opposing Trademarks and the trademark at issue, still the results of a market survey the China Industrial and Commercial Research Institute had been commissioned to perform upon the Defendant’s application showed that 12.98% of the respondents seeing the webpages bearing the trademark at issue would perceive that they are provided by the owner of the Opposing Trademarks; and 20.74% of the respondents seeking the web address containing “” would perceive that it is set up by the owner of the Opposing Trademarks.  Since the population of such statistical analysis was almost the entire population of this country, 12.98% of the national population, which is conservatively estimated at 23 million according to general social perception, is close to 3 million, and 20.74% of the population represents more than 4.7 million people.  Therefore, it was determined that actual and serious confusions and misidentifications could be resulted.  When other relevant evidence in the case file was also generally considered, it was concluded that the trademark at issue was indeed likely to cause confusions and misidentifications among the consumers and thus the Decision was rendered in favor of the Plaintiff.