Trademark Examination Guidelines Expanded for Trademark Dilution


January 25, 2008

Before the 2003 amendment to the Trademark Act (the "Amendment"), well-known marks in Taiwan had mainly been protected by two different theories, that is, the theory of confusion and that of dilution, even though only the former had been expressly stipulated in the law and the latter had somewhat been left in the grey area. In the Amendment, the word "dilution" is formally introduced for the first time in the Trademark Act:

”a trademark application shall be rejected if the proposed trademark] is identical or similar to another person's well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark” (Article 23.1.12)

In order to align trademark theories in Taiwan with its international counterpart, and in response to the practical needs, Taiwan Intellectual Property Office recently expanded certain sections of the Examination Standards for Well-Known Trademark Protection of Article 23, Paragraph1, Subparagraph 12 of the Trademark Act (“Examination Standards”) in the hopes of distinguishing and clarifying between the two theories.

According to the Examination Standards, a mark well-known by the relevant pubic, whether registered or not, may preclude a similar or identical mark from registration if the registration of such a trademark would confuse the relevant public mistaking the two marks being from the same source, or cause the relevant public to associate the two trademarks as having an affiliate, license, franchise or other similar relationships. The confusion theory protects a mark as to identifying its source and moreover, the rights and interests of the public. On the other hand, the dilution theory provides a supplemental protection to a well-known mark in and of itself, namely, its distinctiveness and reputation. In the event that the distinctiveness and reputation of a well-known mark is diluted or weakened by another mark with no occurrences of confusion, and thus no remedy can be realized from the confusion theory, it is possible that the dilution theory may then be used. Moreover, since the protection afforded by the dilution theory is more inclined to the protection of private rather than public interest, and can result in a monopoly, the threshold of notoriety (i.e. the degree the mark is well-known) will tend to be heightened than in the case of a normal well-known mark meeting the threshold of protection under the confusion theory.