In this mid-August, Taiwan’s IP Office updated the list of famous marks based on 4243 decisions. These decisions were rendered during the period from July, 2011 to June, 2016 by the courts, the IP Office, the Fair Trade Commission, and the Taiwan Network Information Center (TWNIC) in cases including trademark applications, opposition and invalidation actions, litigations, and domain name disputes.
In Taiwan, trademark registration is a prerequisite for the protection of trademark rights. When a mark is registered in respect of certain goods/services, said registered mark may serve as a bar to registration of an identical or similar mark in respect of the same or related goods/services in accordance with Article 30.1.10 of the Trademark Act.
A famous mark is, however, accorded a broader sphere of protection.
According to Article 30.1.11 of the Trademark Act, a famous mark, registered or not, may block registration of an identical or similar mark filed in respect of the same, related, or even unrelated goods/services provided that registration of said similar mark is likely to impair the distinctiveness of the reputation of the famous mark.
Moreover, according to Article 70 of the Trademark Act, a trademark infringement case will be established when a person knowingly (1) uses a mark being identical with or similar to another’s registered famous mark, or (2) adopts the word element of another’s registered famous mark as one’s own company name, domain name, or any other name that identifies a business entity, thus likely to impair the distinctiveness or reputation of said famous mark.
An unregistered famous mark proprietor, when faced with infringement, may resort to the Fair Trade Act. According to said Act, a person, who uses a mark being identical with or similar to another’s famous mark in respect of the same or related goods/services and thus causes marketplace confusion, shall be subject to civil liability.
In relation to the 4243 decisions, many of them are reconfirmation of the marks that have already been recognized as famous in the past. Moreover, it can be noted from the list that a large number of marks are foreign-owned. Italian-owned marks have been recognized for most times (i.e. 1063 times), among which Valentino’s marks were recognized 903 times. Next to Italy, there have been 698 times for the marks owned by U.S. individuals or companies to earn such recognition, among which Apple Inc. took up 145 times. Of the 473 recognitions of Japanese-owned marks, Sanrio Co., Ltd. took up 146. As for French and British-owned marks, they have been identified as famous for 225 and 139 times, respectively. What is noteworthy here is that there were only 49 recognitions of Chinese-owned trademarks. Even by adding the marks owned by companies indirectly invested by Chinese to the number, the ratio is still relatively low.
The last time that Taiwan’s IP Office compiled a list for famous marks in such a large scale was in 2008. Since 2010, the IP Office has reviewed trademark cases annually and published updated information online for public reference. With such information readily accessible on-line, a foreign entity is advised to refer to the most updated list of famous marks when it plans to adopt and use a new Chinese mark or company name in Chinese-speaking countries, including Taiwan, in a bid to (1) prevent the new mark or company name from being barred from registration, and (2) avoid potential trademark infringement.