Newsletter
REVERSE CONFUSION OF TRADEMARKS
If a "junior" trademark (a mark for which regis-tration is sought, or which is used, later than an-other mark) that is identical or similar to a "senior" mark (an earlier-registered or ear-lier-used mark), is used on the same or similar goods or services as the senior mark, and if such use is likely to dilute the distinctiveness of the senior mark or to lead to confusion, then regis-tration of the junior mark is likely not to be granted, or its use may even constitute trademark infringement. However, if the junior mark is better known than the senior mark, its use may give rise to so-called "reverse confusion" be-tween the trademarks (a mistaken belief among consumers that the goods or services of the sen-ior user originate from the junior user). The is-sues of whether, in such cases, registration of the junior mark may be granted, and whether its use does not necessarily infringe upon the senior mark, remain highly disputed in both theory and practice.
In a 2007 judgment, the Taipei High Adminis-trative Court held that reverse confusion of trademarks should not be made a reason for granting registration to a later trademark appli-cation, and that use of such a junior mark was likely to constitute trademark infringement. The court's reasoning was that generally speaking in such cases, the senior mark owner is in a weaker position in the marketplace, while the junior mark owner is in a more dominant position or is extremely well known. This being so, the junior owner's use of the junior mark may create a false impression among consumers that the junior owner is the source of the goods or services supplied by the senior owner. Although the junior owner is not attempting to take unfair advantage of the senior owner's commercial reputation, such an impression will cause the senior mark to lose its value, and will impact the senior mark's ability to penetrate the market.
It remains to be seen whether the above opinion of the Taipei High Administrative Court on re-verse confusion will affect the outcome of future trademark infringement litigation.