According to Article 30.1.10 of the Trademark Act, a trademark that is identical with or similar to a registered trademark or an earlier-filed trademark of another party, and designated for use upon identical or related goods or services shall not be registered if their co-existence in the marketplace is likely to cause confusion or misidentification among relevant consumers. In addition, it is stipulated in the “Examination Guidelines for Likelihood of Confusion” issued by the Taiwan Intellectual Property Office ( TIPO) that there are eight factors to be considered in the test of “likelihood of confusion.” One such factor is the degree of consumer familiarity with the trademark. If two conflicting trademark have been co-existent in the marketplace and respectively established their own recognition in the mind of consumers, and if the later-filed trademark applicant can substantiate that the use of its trademark has reached a level where consumers are able to recognize the two trademarks as originating from different sources, such coexistence should, to the extent possible, be respected. Moreover, If relevant consumers are more familiar with one of the two conflicting trademarks, greater protection should be afforded to the better-known trademark. However, given that Taiwan's trademark system adheres to the doctrine of protection by registration, in order to prevent a later-filed trademark applicant from usurping the interests of a prior registered trademark through marketing efforts, the “degree of consumer familiarity” factor is not decisive and must be considered in juxtaposition with other factors.
The above principle was recently addressed by the Supreme Administrative Court (hereinafter referred to as “SAC”) in its Judgment rendered on July 10, 2025, in which the Court found, among others, that the “degree of consumer familiarity” is not a decisive factor in the test of “likelihood of Confusion.”
A company filed an application for registration of the trademark “SMILE” in respect of medical services, namely ophthalmic medical services and ophthalmic surgical services in Class 44 (hereinafter referred to as the “applied-for trademark”). The TIPO cited a prior registered trademark in Class 44 designated for use upon dental medical services and services relating to pharmaceutical compounding, medical care, and pharmaceutical consultation (hereinafter referred to as the “cited trademark”) to refuse registration of the applied-for trademark on the grounds that the two marks are similar in appearance and are designated for use upon related services, thereby running afoul of Article 30.1.10 of the Trademark Act.
Being dissatisfied with the refusal, the applicant filed an appeal with the Board of Appeals and subsequently an administrative litigation with the Intellectual Property and Commercial Court (hereinafter referred to as “IPCC”). However, the two authorities both upheld the TIPO's decision. The applicant then appealed the case to the SAC.
The applicant argued that the two trademarks are dissimilar and the designated services are unrelated. It also submitted some evidence of use of the applied-for trademark, averring that the applied-for trademark has enjoyed a relatively high level of recognition and is better-known to relevant consumers across the country. On the other hand, the cited trademark offered services exclusively in a district of a city situated in southern Taiwan. Thus, relevant consumers are capable of distinguishing the two trademarks originating from different origins, and besides, there have never been any actual instances of confusion or misidentification between the two trademarks. Accordingly, allowing co-existence of the two trademarks would not give rise to a likelihood of confusion among relevant consumers.
The IPCC, in its Judgment, held that Taiwan's Trademark Act adopts the “first-to-file” doctrine. Therefore, even if an earlier-filed trademark is not highly renowned or widely recognized by relevant consumers, the earlier filed trademark holder is still entitled to claim its rights in accordance with law. Moreover, to preserve fair competition in the marketplace and prevent well-funded enterprises from leveraging their extensive marketing capabilities to impair the rights of prior trademark owners, protection should be afforded to the earlier-registered trademark, rather than the later-filed but better-known trademark.
The IPCC also held that, even if the applicant's assertions were true, granting registration to the later-filed trademark would constitute a violation of the first-to-file doctrine under the Taiwan Trademark Act. Furthermore, the coexistence of the two parties' trademarks in the marketplace - given the similarity in their visual appearances and the relevancy of the designated services - would likely mislead consumers into believing that the two trademarks originate from the same source, or that the holders of the trademarks are related entities, licensees, franchisees, or otherwise affiliated. This further substantiates that allowing registration of the applied-for trademark would unavoidably pose a likelihood of confusion among consumers.
Upon appeal, the SAC upheld the decision of the IPCC, reaffirming that Taiwan's Trademark Act is, in principle, based on the doctrine of protection by registration. The Court emphasized that the “degree of consumer familiarity” in the test of “likelihood of confusion” is not a decisive factor. In order to prevent a later-filed trademark owner from appropriating the interests of a prior registered trademark owner through subsequent marketing efforts, the so-called “degree of consumer familiarity” factor must be assessed in juxtaposition with other factors. To this end, having synergistically considered “degree of consumer familiarity” factor, inter alia, in assessing “likelihood of confusion”, the SAC found that IPCC's determination - that allowing registration of the applied-for trademark would indeed give rise to a likelihood of confusion among consumers - was not without merit.
The “degree of consumer familiarity” is indeed one of the factors to be considered in the test of “likelihood of confusion.” However, when a later-filed trademark is highly similar to an earlier-filed or registered trademark, and the designated goods or services are also highly relevant, the reputation established in the later-filed but better-known trademark among consumers may lead consumers to mistakenly believe that the goods or services of both parties originate from the source of the goods or services under the better-known trademark, thereby giving rise to a likelihood of confusion.
In case a likelihood of confusion is existent, the “first-to-file” doctrine dictates that protection should be afforded to the earlier-filed trademark, and the later-filed trademark should be refused registration Accordingly, trademark proprietors who intend to use - or are already using - their trademarks in Taiwan should file trademark applications as early as possible. Even before using or applying for registration of a trademark, they are well-advised to conduct a trademark clearance search to assess the registrability of the trademark, in order to avoid the risk of refusal and the resulting predicament of having to alter their trademark.