Taiwanese regulations provide stronger protection for well-known trademarks compared to general trademarks. Well-known trademarks can passively prevent others from registering (Article 30(1)(11) of the Trademark Act), and can also actively prevent others from using them as the name of a company, business, group, domain, or any other name that identifies a business entity. According to Article 70(2) of the Trademark Act, without the consent of the proprietor of a registered trademark, knowingly using words that are part of another person's well-known registered trademark as the name of a company, business, group, domain, or any other name that identifies a business entity—where there is a likelihood of confusion among relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the well-known trademark—shall be deemed infringement of the rights of the trademark proprietor.

 

But how is a trademark determined to be "well known"? Does the distinctiveness and reputation of the trademark need to be widely recognized by "ordinary consumers"? Or is it sufficient for the trademark to be widely known in the relevant market for the goods by "relevant consumers," even if it is not proven to be widely recognized by "ordinary consumers"? If the former standard is adopted, the trademark must have a higher degree of fame in order to be protected.

 

In practice, there is a consensus on this issue. According to Article 31 of the Enforcement Rules of the Trademark Act, the term "well known" in the Trademark Act refers to a trademark that is widely recognized by "relevant" businesses or consumers based on objective evidence (see the Supreme Administrative Court's ruling 111(2022)-Da No. 1 and judgment 110(2021)-Shang No. 138). Therefore, regardless of the degree of fame of a trademark, the distinctiveness and reputation of the trademark being widely recognized by "relevant consumers" is sufficient to deem it a "well-known trademark" and thus entitled to protection under relevant laws (see the Intellectual Property and Commercial Court's civil judgment 111(2023)-Min-Shang-Shang No. 24).

 

Based on this standard, even if the accused infringer presents a market research report to prove that the disputed trademark is not widely known by "ordinary consumers," this is still not sufficient to deny its status as a well-known trademark. For example, in the Intellectual Property and Commercial Court's civil judgment 113(2024)-Min-Shang-Shang No. 1 on July 18, 2024, the accused infringer presented a market research report showing that almost 95.50% of the respondents claimed to have never seen the disputed trademark, with only 4.50% claiming to have seen it. Based on this, the accused infringer argued that the disputed trademark is not a well-known trademark. However, the court ruled that the market research report could not be used as evidence to deny the disputed trademark's status as a well-known trademark, mainly because the survey participants were not relevant consumers of the disputed trademark's products. 

 

The court, after considering the evidence presented by the trademark owner, ultimately determined that the disputed trademark is a well-known trademark. This decision was based on the following facts and evidence: 

 

l   The trademark's sales points are spread across Taiwan, as supported by the channel base information of affiliated companies. 

 

According to judicial practice, the determination of a well-known trademark should take into account the strength of the trademark's distinctiveness, the level of awareness or recognition of the trademark among relevant businesses or consumers, the duration, extent, and geographical area of the trademark's use and promotion, whether the trademark has been applied for or registered, and the duration, extent, and geographical area of the application or registration, the history of the trademark successfully exercising its rights—particularly cases where it has been acknowledged as famous by administrative or judicial authorities—the value of the trademark, and other factors that are sufficient to establish the status of a well-known trademark and make a comprehensive judgment. The above factors are illustrative examples and not exhaustive requirements. In specific cases, it is not necessary to present all of the above factors. To persuade the court to recognize a trademark as "well known," the trademark's owner should, based on the specific circumstances of the case, provide evidence that the trademark is well known to the relevant consumers in the market for specific related goods.