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OVERSEAS USE NOT RELE-VANT TO WHETHER A MARK IS FAMOUS IN TAIWAN
Article 37 Item 7 of the Trademark Law provides that a trademark may not be registered if its de-sign is identical with or similar to a well known mark owned by another, such that the public may be confused or may misidentify it. For guidance in handling related matters, the Intellectual Property Office has published its Main Points for Determining a Famous Trademark, which pro-vide that when determining whether a mark is famous, the examiners may consider the status of its registration and use, but that lack of registra-tion, pending registration or use in Taiwan is not decisive—a judgment must still be made as to whether information evidencing use of the mark overseas is known to relevant businesses or consumers in Taiwan.
A point of dispute in practice is how to determine whether a mark is known to relevant business or consumers within Taiwan on the basis of evi-dence of its use or registration overseas, if there is no ample evidence of its use in Taiwan. In a 2001 judgment, the Taipei High Administrative Court held that evidence of use of a mark in Ja-pan alone could support the assumption that the mark is well known in Taiwan, because "large numbers of people travel between Japan and Taiwan for reasons of sightseeing, tourism, commerce, business, and study," and "informa-tion about new products related to Japanese popular entertainment and everyday consumer culture often enters Taiwan."
However, in a 2002 judgment relating to a mark for which there was evidence of use only in Ja-pan, the court took a completely different view. It stated that evidence of use of a mark in Japan could hardly be made the basis for assuming that the mark was known to relevant businesses or consumers in Taiwan, and that without ample, specific evidence of its use in Taiwan, the mark could not be held to be well known. The court also noted in its judgment that the fact of a mark's registration in Taiwan or elsewhere was not evidence of its use, and should not be relied upon in determining whether the mark was well known.
At present, the great majority of the judges of the Taipei High Administrative Court adopt a rela-tively strict view, and when determining whether a trademark is well known in Taiwan, in princi-ple only consider evidence of the mark's use in Taiwan; they do not take into consideration the status of the mark's registration in Taiwan, or evidence of its use, registration or other status overseas. This attitude has far-reaching impli-cations for the protection of famous trademarks.