TIPS^®  Taiwan Intellectual Property Special

Taiwan's Newly Revised “Criteria on the Identification of Famous Marks”

The Intellectual Property Office of the Ministry of Economic Affair in Taiwan announced on August 10 the revised “Criteria on the Identification of Famous Mark” (“Criteria”), which can be served as a judgement standard to determine whether a mark is famous. The so-called “famous mark” set forth in Article 37, sub-paragraph 7 of the Trademark Law shall mean that there is substantial evidence to show that such mark has been well-known by relevant enterprises or consumers.

First of all, Article 3 of the Criteria provides that the meaning of “relevant enterprises and consumers” shall depend on the transaction scope of the goods/service of such mark, including but without limits: (1) the actual or potential consumer of the goods/service of such mark; (2) the persons involved in the marketing channel of the goods/service of such mark; or (3) the relevant persons for management of the goods/service of such mark. Article 4 of the Criteria further provides that, as long as one of the three conditions listed in Article 3 has been fulfilled, such mark shall be deemed as a famous mark.