The facts of the case prosecuted by the prosecutor are as follows: The defendant, without the consent of the Trademark owner, reproduced a graphic (referred to as the "Disputed Graphic") that included the Disputed Trademark, provided the Disputed graphic to a manufacturer in mainland China, and commissioned the manufacturer to produce clothing containing the Disputed Graphic, which was then sold wholesale to clothing stores. The prosecutor therefore charged the defendant with violating Article 95(I)(3) and 97 of the Trademark Act, as well as Article 91(II) of the Copyright Act. After trial, the Court rendered the 112-Zhi-Su-Zi-12 Criminal Judgment, finding that the Disputed Graphic and the Disputed Trademark were not similar, and thus acquitted the defendant. However, the Court, while determining that the two were dissimilar, further concluded that: (1) based on the evidence in the case file, it cannot be ascertained the market share of the products related to the Disputed Trademark, the level of fame of the Disputed Trademark, or the extent to which it is familiar to related businesses or consumers, which is insufficient to prove that the Disputed Trademark is a well-known trademark widely recognized by related businesses or consumers, and it is reasonable to believe that consumers would not mistake the Disputed Graphic as an indication of the origin of the goods (i.e., not used as a trademark), and (2) because the Disputed Trademark is not a well-known trademark, the defendant subjectively believed that the Disputed Graphic was not a trademark, which is in line with common sense, making it difficult to establish the defendant's subjective intent to infringe or counterfeit.

 

The protection of "well-known trademarks" is stipulated in Article 70 of the Taiwan Trademark Act. It states that "knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark" or "knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark", are all considered trademark dilution and can result in civil liability for deemed trademark infringement. However, the constitution of criminal liability does not specifically require the trademark to be "well-known." The aforementioned Court's judgement appears to introduce additional requirements that are not provided for by law, which may not be logically sufficient.

 

In detail, regarding (1), whether the Disputed Graphic is used as a trademark should be determined based on the disputed goods themselves, that is, according to general social norms and market transactions, whether relevant consumers would consider the Disputed Graphic as indicating the origin of the goods or services and distinguishing them from those of others (refer to the judgment of Intellectual Property and Commercial Court, Civil Case No. 25 of 2022). This is unrelated to whether the Disputed Trademark is well-known. Regarding (2), the subjective intent of the defendant to infringe should also be determined by considering the evidence in the case. If there is other evidence to suggest that the defendant knew about the infringement, even if the Disputed Trademark is not well-known, it can still constitute intentional infringement. The reasoning in the aforementioned Court's judgment seems to be confusing and may have a significant impact on the rights protection of trademark owners. It is worth paying attention to the subsequent development of this case and whether other courts adopt similar views.