Divergence in What Constitutes
“Well-Known” in the Trademark Act
published on 1 Jul 2018
A Chinese term can encompass multiple meanings. “著名,” pronounced as “zhu-ming,” is acknowledged as either meaning “famous,” “celebrated,” “outstanding,” or “well-known” according to Google Translate. As “著名” appears in Article 30(1)(11) of the Trademark Act with respect to the protection of the well-known trademarks, the Chinese term was therefore translated into “well-known.” Notably the degree of fame and the corresponding level of protection were not persistent throughout time, which can be seen throughout the judicial opinions in several rulings of the Supreme Administrative Court (“SAC”).
Article 30(1)(11) of the Trademark Act reads that an application for trademark registration shall be refused if it -
[be] identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public1 or a likelihood of dilution of the distinctiveness or reputation2 of the said well-known trademark or mark, […];
For some years, “well-known” in the Trademark Act was understood to mean a degree that a mark is known to the relevant consumers or enterprises in the same industry. This entails that there is a uniform level of protection against a junior registration on the grounds that the registration is either likely to cause confusion or dilution, despite the fact that the same term appears twice respectively on the former and latter paragraphs in the foregoing provision. This definition was raised in SAC’s opinions in judgments 2012-Judge-No.47 and 2012-Judge-No.48.
The SAC’s judgements back in 2012 adhered to the “literal” definition (the plain meaning) of Article 31 of the Enforcement Rules of Trademark Act (“Enforcement Rules”) which provides that -
[t]he term [well-known] as prescribed in the Trademark Act refers to the circumstance where there is objective proof of a sign capable of being commonly recognized by the relevant enterprises or consumers.
As such, SAC opined that a lower degree of fame was sufficient to protect a well-known trademark in either a situation involving a likelihood of confusion or a likelihood of dilution.
Later, in 2016, the SAC held a Joint Conference for Chief Judges in which these judges voted on a Resolution (“2016 SAC Resolution”) regarding the degree of fame in the former and latter paragraph of Article 30(1)(11). The 2016 SAC Resolution analyzed the definition of “well-known” from the perspective of fair and free competition. As majority vote explained, when the markets of the junior and senior marks’ goods or services are differentiable, and the commercial conflicts thereof are not significant, consumers are not likely to hold the misconception that the goods or services come from the same source or an associated source. However, when permitting registration of a junior mark leads to a negative consequence in that it lessens the distinctive characteristics of the senior mark or weakens reputation of the same, dilution protections shall also be invoked. Moreover, protecting a senior mark in risk of dilution demands enforceability to crossover to another market with lighter commercial conflict, which may potentially produce significant risks over free competition, or result in exclusivity for a specific word, symbol, device, or a combination thereof. As a result, dilution protection shall only be limited to those enjoying higher degree of fame, namely that which goes beyond the scope of the same or similar goods or services designated by the well-known trademark, so as to reduce potential harm and risk to the public.
The 2016 SAC Resolution clearly states that the degree of fame for a well-known trademark in the former and latter paragraphs of Article 30(1)(11) shall be interpreted differently. The provision in Article 31 of the Enforcement Rules regarding the definition of fame should be interpreted narrowly by the purpose of application; it is not applicable to “well-known trademark” stipulated in the latter paragraph of Article 30(1)(11) of the Trademark Act.
Subsequently, in 2017, in the SAC’s Judgement 2017-Judge-No.608, the court confirmed the definition of “well-known” in the latter paragraph of Article 30(1)(11) of the Trademark Act as being different from that in former paragraph. The court reasoned that the former paragraph aims to protect “relevant consumers” from being confused as to the genuine source of goods or services, an interpretation which is in line with the definition stipulated in the Enforcement Rules. On the contrary, the latter paragraph was so devised to protect the trademark per se to avoid the distinctiveness or reputation of that mark from being diluted among the perceptions of the general public. The scope of protection is therefore not limited within the scope of identical or similar goods or services. In other words, it is Justifiable to demand a higher degree of fame from the trademark in order to endow the protection to a mark beyond its designated class(es). When a mark is known to consumers of some specific class(es) of goods or services, the mark shall not be entitled to an expansion of protection to dissimilar goods or services. In short, to defend a junior registration that is likely to dilute a senior mark, the senior mark must be “well-known” to more than relevant consumers but to the general public. Article 31 of the Enforcement Rules does not apply. The foregoing ruling echoed the 2016 SAC Resolution.
Some later judgements from the lower courts, including those of the Taiwan IP Court, are in consistent holding with the bifurcation of interpretation for the term “well-known” stipulated in Article 30(1)(11) of the Trademark Act. Trademark owners should be more prepared to present sufficient evidence in cases based on the grounds of dilution.
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