Under the current Taiwan Trademark Act, it is expressly stipulated that a trademark shall not be registered if it is identical or similar to a famous mark, and it shall be deemed infringement of the trademark right by knowingly using such famous trademark without the consent of its owner. In fact, before Taiwan joined WTO on January 1, 2002, the protection of famous trademark was already implemented into the law when Taiwan Trademark Act was revised in 1997 so as to meet with the requirements of TRIPS Agreement. For those famous trademarks which are non-registered in Taiwan, the owner could seek protection by filing a complaint under Fair Trade Act or pursuing civil lawsuit with the court if necessary.
In Taiwan, like most jurisdictions, the determination on a famous trademark of domestic or foreign origin is quite subjective, and it has therefore always been conducted on a case-by-case basis. Accordingly it could be difficult for a consumer or applicant to know whether a logo, symbol or mark is a famous or well-known. In 2008, Taiwan Intellectual Property Office (TIPO) started compiling the famous trademarks from 2004 to 2009 which were recognized or determined not only by TIPO, and also by the Trade Fair Commission (TFC), the courts, or the Taiwan Network information Center (TWNIC), for the reference of government authorities, enterprises, academic institutions and other relevant units. Recently TIPO has updated the directory and compilation of famous trademarks from July 2011 to June 2016, and published the same online for the reference of public or private sectors. Said compilation contains more than four thousand cases involving famous trademarks, and averagely, there were over 700 hundred cases each year.
Per the judicial practice, disputes always arose among the misuse of famous marks in non-similar goods or services, or there were conflicts between the company or trade name used and the other person’s famous mark. Along with the above compilation of famous trademarks, TIPO urges the individual or private company to make a prior search based on said compilation before the registration of a new company to prevent any infringement of the famous marks, otherwise the right owner could file a civil action with the court ordering the infringer to change his company name while claiming compensation for damages, or the governmental authority could dismiss the registration of his company name.
