Determination of Well-known Trademarks (Taiwan)

May 2023

Jane Tsai and Julian Lai

Under Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act, no application may be filed to register a trademark if it is identical with or similar to another person’s well-known trademark, and hence there exists a likelihood of confusion among the relevant public or a likelihood of dilution of the distinctiveness or reputation of the such a well-known trademark or mark, unless the proprietor of the well-known trademark consents to the application.

However, this calls into question the criteria for determining the so-called “well-known trademark.”  Is it sufficient that such a trademark is widely-known among the “relevant consumers” or does it need to reach a level of widespread awareness among the “general consumers”?  Regarding this issue concerning well-known trademarks, it is noteworthy that that the Supreme Administrative Court rendered the 111-Da-1 Grand Chamber Ruling of March 17, 2023 to reverse the opinion of the First Joint Meeting of the Chief Judges of the Supreme Administrative Court held in November 2016.

 I. The resolution of the First Joint Meeting of Chief Judges of the Supreme Administrative Court held in November 2016 stated that the requirements for the level of fame in the forepart and latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act are different. Specifically, the latter part of the provision imposes a higher standard, requiring the trademark to be widely known among the “general consumers.”

The First Joint Meeting of Chief Judges of the Supreme Administrative Court held in November 2016 previously pointed out that when determining whether a trademark has satisfied the standard of being well-known, a distinction should be made between the forepart and the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act.  Specifically, if the circumstances fall under the forepart of Article 30, Paragraph 1, Subparagraph 11, which provides for the circumstance of being “identical or similar to another well-known trademark or mark to an extent likely to cause confusion among relevant public,” since this provision seeks to protect the relevant consumers of the goods or services associated with the trademark, it is sufficient for the trademark to be widely known merely among the “relevant consumers” to be recognized as a well-known trademark.

However, in case of circumstances under the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act, which provides for the circumstance of being “identical or similar to the well-known trademark or mark of another person to an extent likely to dilute the distinctiveness or reputation of the well-known trademark or mark,” this provision seeks to protect the well-known trademark per se.  Furthermore, it is also likely that the scope in which other trademarks are restricted from registration may extend to other markets where the conflict of business interests is not apparent.  Therefore, the criteria for establishing fame in this connection should reach a level of widespread awareness among the “general consumers” for a trademark to be recognized as a well-known trademark under the latter part of this provision.

Based on the foregoing, the First Joint Meeting of Chief Judges of the Supreme Administrative Court held in November 2016 concluded that the provision of Article 31 of the Enforcement Rules of the Trademark Act, which provides that a well-known trademark only needs to be widely known among the “relevant consumers,” should be interpreted as a limitation with a particular purpose.  It applies only to the forepart, not the latter part, of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act.  For the circumstances specified in the latter part, a well-known trademark should be required to reach a level of widespread awareness among the “general consumers.”

II. The 111-Da-1 Grand Chamber Ruling of the Supreme Administrative Court held that the level of fame required in both the forepart and the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act is the same in that both require the trademark to reach the extent of widespread awareness among the “relevant consumers.”

However, the Supreme Administrative Court held in its 111-Da-1 Grand Chamber Ruling that even in circumstances under the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act, which provides for the “likelihood of dilution of the distinctiveness or reputation of a well-known trademark or mark,” the trademark in question is not required to reach the level of general awareness among the “general consumers.”  Instead, it would be sufficient if widespread awareness among the “relevant consumers” is achieved.  The main reasons are summarized below:

(1) According to the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks released in September 1999 by the WIPO (World Intellectual Property Organization), whether it is required that the impairment or dilution of the level of fame of a well-known trademark among the general public is left to the discretion of each member state. In this regard, when Article 30 was added to the Trademark Act in 2003, neither the explanations provided in the legislative proposal submitted by the Executive Yuan nor the provisions of Article 31 of the Enforcement Rules of the Trademark Act differentiated the definitions of well-known trademarks in the forepart and the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act.  They also did not require the level of fame of a well-known trademark in the latter part Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act to reach the extent of widespread awareness among the “general consumers.”

(2) Furthermore, Article 70, Paragraph 2 of the Trademark Act, which pertains to civil matters involving trademark infringement, does not provide separate definitions for well-known trademarks, whether this pertains to the likelihood of confusion among the relevant consumers or the likelihood of dilution of the distinctiveness or reputation of a well-known trademark. If different interpretations of the definition of well-known trademarks are adopted in civil and administrative cases, it would create an unfavorable impact on the trademark owner’s right to use the trademark and disrupt market transactions since which definition should be adopted is uncertain.  Moreover, based on the legal principle of consistent interpretation for the same terminology and content, the definition of “well-known trademarks” in the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act should be interpreted in the same manner as the term “well-known trademarks” used elsewhere in the Trademark Act.  This means that it is more reasonable to merely require widespread awareness among the “relevant consumers.”

(3) Regarding the provision in the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act, which pertains to the protection of well-known trademarks against dilution, the requirement for the level of fame is higher compared to the forepart of the same subparagraph, since it is considered merely as one of the factors to determine whether the conditions of “likelihood of dilution of the distinctiveness or reputation of the trademark” are met. It does not mean that trademarks that have not reached the extent of widespread awareness among the “general consumers” always fail to meet the criteria for the latter part of the provision.

Based on the foregoing, the 111-Da-1 Grand Chamber Ruling of the Supreme Administrative Court held that the term “well-known trademark” as defined in the latter part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Act does not require the level of fame of the trademark to reach the widespread awareness among the “general consumers” in order to apply the latter part of the subparagraph.  As for whether there is a likelihood of dilution of the distinctiveness or reputation of a well-known trademark, it is still necessary to generally consider factors such as the level of fame of the trademark, the degree of similarity between the trademarks, the extent to which the trademark is commonly used for other goods or services, the inherent or acquired distinctiveness of the well-known trademark, and other factors indicating the intention of the owner of the trademark at issue to associate its trademark with the well-known trademark.


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