Jane Tsai and Hannah Kuo
On October 27, 2021, the Ministry of Economic Affairs (, the “MOEA”) amended the trademark “Examination Guidelines on Likelihood of Confusion“ (, the “Guidelines”), which came into effect on the day of their promulgation. The Guidelines before amendment were promulgated in 2012, almost 10 years ago. These amendments referenced the examination guidelines in the European Union, Japan, and the U.S. as well as the judicial practice and opinions in Taiwan and further supplemented the specific guidelines to the eight relevant factors for evaluating the likelihood of confusion. These amendments are highlighted below:
1. Similarity and degree of similarity of trademarks: Whether the trademarks are similar should be determined by considering if the overall appearance, pronunciation, and concept of the trademarks have reached a degree of similarity that may lead to confusion. In this regard, the Guidelines as amended contain additional principles and examples for determining the similarity in terms of Chinese and foreign-language appearance and pronunciation of several trademarks and have additional explanations regarding the strength of distinctiveness and overall observation of trademark elements.
2. Similarity and degree of similarity of goods/services: The Guidelines as amended contain additional consideration factors, such as “nature,” “use,” “marketing channels or point of sale,” and “consumer groups,” for determining if goods/services are similar and supplement the explanation about the complementary functions or joint or combined use of goods/services, as well as the principles and guidelines for determining the similarity between goods and parts and components, raw materials or semi-finished goods.
3. Status of diversified operation of the prior rights holder: The Guidelines as amended suggest that to determine the possibility of diversified operation or the scope of diversified operation of the prior rights holder, the actual use by the prior rights holder or the area in which the prior rights holder may also operate should be taken into consideration, rather than that only rely on the content or type of goods/services designated at the time of registration.
4. The degree of relevant consumers’ familiarity with the trademarks: The Guidelines as amended indicate that the Trademark Law in Taiwan basically adopts the first to register doctrine to avoid a trademark applied at a later time from encroaching on the interests of the owner of an earlier registered trademark through subsequent marketing. Therefore, when the likelihood of trademark confusion is determined, the “degree of consumer’s familiarity with the trademarks” is not a decisive factor, and other referential factors should be generally considered at the same time.
5. Bona fide registration application for the trademark at issue: The Guidelines as amended suggest that it should be presumed that all trademark registration applications are filed in good faith unless proven otherwise by counterevidence.