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DETERMINATION OF TRADE-MARK SIMILARITY NEED NOT CONSIDER POSSIBLE COLORA-TION
Article 31 Paragraph 1 Item 1 of the Trademark Law provides that use of a registered trademark with an altered design or with the addition of further markings, such that the mark becomes similar to a trademark registered by another person for use on the same or similar goods, may be grounds for cancellation of the mark's regis-tration. According to the view taken by the Administrative Court in a 1980 judgment, any trademark examined or registered without des-ignated coloration is regarded as being in black and white; but in actual use, insofar as the mark is not otherwise altered, it may be applied in any color without this being regarded as an alteration or addition.
It has been a matter of dispute what remedy is open to a trademark registrant if the coloration of another mark in actual use does indeed create the likelihood of similarity with his own mark, yet such coloration cannot be regarded as alteration. There has also been dispute as to whether the possible future coloration of a mark should be considered during the examination of a trade-mark registration application, when determining whether the mark is similar to other marks al-ready registered.
In a 2001 judgment the Taipei High Adminis-trative Court held that the possible future col-oration of a trademark should not be considered during examination for similarity with registered marks; and the actual future coloration of such a mark should only be considered as a question of whether the trademark used is altered from the trademark registered. It remains to be seen whether the court will move further away from the 1980 judgment by holding that different coloration can constitute an alteration.