If a trademark applicant who becomes aware of a trademark used earlier by another person intends to imitate such trademark by registering a similar trademark for use on similar goods, such registration shall be prohibited, and this is not a precondition by whether the relevant public or consumers are likely to be confused or led to misidentification (Taiwan)

2018.5.24
Jane Tsai

The Intellectual Property Court rendered the 106-Hang-Shang-Su-149 Administrative Decision of May 24, 2018 (hereinafter, the “Decision”), holding that if a trademark applicant who becomes aware of a trademark used earlier by another person intends to imitate such trademark by registering a similar trademark for use on similar goods, such registration shall be prohibited, and this is not a precondition by whether the relevant public or consumers are likely to be confused or led to misidentification.

According to the facts underlying this Decision, the Plaintiff applied to register the “Dermaheal” trademark. After the Intervenor filed an objection, the Defendant conducted a review and then concluded that the trademark at issue was subject to Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law and rendered the original disposition to cancel the registration of the trademark at issue.  Dissatisfied, the Plaintiff brought an administrative action.

Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law provides that a trademark shall not be registered if it is identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark. According to the Decision, this subparagraph seeks to prevent others from rushing to register a trademark which imitates another trademark created and used earlier by another person and to avoid unfair competitive acts by granting opportunities to earlier users of trademarks which are registered by another person in order to remedy their rights.

This Decision generally considered that the Intervenor had used the trademark which formed the basis of opposition, that the devices of the two trademarks were highly similar, that both trademarks were designated for or used on the same or similar goods, that the Plaintiff had learned about the trademark which formed the basis of opposition through business relations with the Intervenor, and that the trademark at issue attempted to imitate and leverage the trademark which formed the basis of opposition. As a result, it was concluded in this Decision that the Plaintiff had learned about the existence of the trademark which formed the basis of opposition, had attempted to imitate such trademark and rushed to register earlier a device highly similar to such trademark as the device of the trademark at issue and designate for use on the same or similar classes of services.  The registration of the trademark at issue was certainly in violation of Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law.

Although the Plaintiff asserted that since there was no sale of goods on which the trademark which formed the basis of opposition was used, it would be unlikely to cause confusions or lead to misidentification with respect to goods bearing the trademark at issue. However, the gist of Article 30, Paragraph 1, Subparagraph 1 of the Trademark law seeks to protect the legitimate interest of earlier trademark users.  If a trademark applicant who has become aware of a trademark used earlier by another person intends to imitate such trademark by registering a similar trademark for use on similar goods, this subparagraph will apply, and this is not preconditioned by confusions or misidentification among relevant public or consumers.