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DIALECT PRONUNCIATIONS AND TRADEMARK SIMILARITY
Registration may not be granted for a trademark that is identical or similar to one already used by another person on the same or similar goods or services, if the applicant is aware of the other person's trademark due to contractual, geo-graphical, or business contacts with the other person, or other relationships with that person. This is provided by Article 23 Paragraph 1 Subparagraph 14 of the amended Trademark Act, which came into force on 28 November 2003 (equivalent to Article 37 Subparagraph 14 of the old Act). In addition, Article 1 of the Criteria for Examination of Similarity between Trademarks, as amended by the Executive Yuan on 2 October 1985, provides that trademarks will be deemed similar if they are similar in appearance, concept or pronunciation. A 2002 judgment of the Su-preme Administrative Court stated that trade-marks are to be considered similar if the pro-nunciations of their textual portions are confus-ingly similar. However, the question of whether "similarity of pronunciation" is limited to the pronunciation in Mandarin Chinese has re-mained controversial in practice.
In a 2001 judgment, the Taipei High Adminis-trative Court held that the Taiwanese dialect pronunciation (lo-lui-su) of the trademark "露雷仕/LULES" was sufficiently similar to that of "勞力士/ROLEX" (lo-lek-su) for the two marks to be deemed similar. The court stated that al-though in principle the pronunciation of the textual portion of a trademark was taken to be the Mandarin pronunciation, this did not mean that the common languages and habits of the general public could not be taken into consideration. Moreover, the former provision that the textual portion of a trademark, including its pronuncia-tion, should be based on the national language, had been repealed, and therefore Mandarin Chinese was not the only basis for determination. Furthermore, in Taiwan, and particularly in cen-tral and southern Taiwan, the overwhelming majority of people used Taiwanese (Southern Fujianese) as their habitual language of com-munication. Therefore when comparing trade-marks for similarity, the Taiwanese pronuncia-tion was naturally an important basis for deter-mination.
The Taipei High Administrative Court took a similar view in 2003 and 2001 judgments, in which it stressed that the great majority of people in Taiwan speak Taiwanese, and held that the pronunciation of the mark "CORHEA" and the Taiwanese pronunciation (gok-hi) of "crocodile", whether observed separately at different times and locations, or repeated in succession, could not objectively be considered unlikely to confuse purchasers, and that the marks should therefore be deemed similar. The Supreme Administrative Court also took the same view in four 2001 judgments and one 2002 judgment.
As to how foreign-language pronunciations should be used as a basis for determining trademark similarity, reference can be made to the IPO's examination guidelines on likelihood of confusion, which took effect on 1 May 2004. Section 5.2.6.3 states that the main impression on consumers made by words from languages with phonetic writing systems, such as English, French, German or Japanese, is that of the pro-nunciation, and when comparing marks exam-iners should therefore place greater emphasis on the pronunciation. If the meaning of a foreign word used in a trademark is not generally un-derstood by the Taiwanese public at large, ex-aminers should mainly compare the pronuncia-tion and appearance of the textual elements. But if a word is generally known to the ordinary public, examiners should place greater emphasis on conceptual comparison.