EXAMINATION GUIDELINES FOR PROTECTION OF WELL-KNOWN MARKS

01/01/2008

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The Intellectual Property Office (IPO) recently announced the Examination Guidelines for Protection of Well-known Trademarks under Article 23-1(12) of the Trademark Act, to replace the Main Points for Determining a Well-Known Mark last amended on 1 May 2004. The Guidelines, for the first time, define two types of trademark dilution referred to in the Trademark Act, i.e. "dilution of the distinctiveness of a well-known trademark" and "dilution of the reputation of a well-known trademark."

The main contents of the Guidelines are as follows:

．A "well-known trademark" means a trademark, which is proved to have been commonly recognized by the relevant enterprises or consumers.

．"Relevant enterprises or consumers" include, without limitation, the following:

1.Actual or potential consumers of the goods or services on which the trademark is used;

2.Persons involved in the distribution channels of the goods or services on which the trademark is used; and

3.Relevant enterprises dealing with the goods or services on which the trademark is used.

．Factors to be considered for determining whether a trademark is well known are:

1.The strength of the trademark's distinctiveness;

2.The extent to which the trademark is known or recognized by the relevant enterprises or consumers;

3.The duration, extent and geographical extent of the trademark's use;

4.The duration, extent and geographical extent of advertising and publicity regarding the trademark;

5.Whether registration of the trademark has been sought or granted, and the duration, extent and geographical scope of any registration/or any application for registration, of the trademark;

6.Records of successful enforcement of rights over the trademark, in particular, the extent to which the mark was recognized as well known by an administrative or judicial authority;

7.The value associated with the trademark; and

8.Other factors sufficient to determine whether the mark is well known.

．Evidence for determining whether a trademark is well known includes:

1.Invoices, marketing documents, import /export documents, sales figures, market share, detailed sales statistics, etc., for the related goods or services;

2.Advertisements in domestic or foreign mass media, such as newspapers, magazines, or television, including size, cost, and quantity of printed advertisements, broadcasting records and broadcast monitoring records for television advertisements, advertisements placed in or on vehicles, bus shelters, or rapid transit stations, freeway as well as shop signs and roadside hoardings, etc.;

3.Evidence of the distribution of sales sites, sales channels, and sales premises for the goods and services, e.g. the number of exclusive service counters in department stores, in chain stores, and at various locations, and the time of establishment of such counters;

4.Evidence of the trademark's market performance, such as appraisals, valuations, sales rankings, advertising expenditure rankings, or information on enterprise operation, e.g. surveys produced by credible newspapers or magazines in Taiwan and abroad, such as rankings of the world's top 100 brands or of Taiwan's 10 most valuable brands, and consumer satisfaction surveys on various kinds of trademarked goods, and discussions and evaluations by Internet users on Chinese-language websites;

5.Evidence of the time of the trademark's creation, and of its continuous use, e.g. company histories and introductions, dates of erection of advertisement hoardings, etc.;

6.Evidence of the trademark's registration in Taiwan and abroad, e.g. registration certificates, listings of countries where the mark is registered;

7.Certifications, market research reports, etc., issued by credible organizations;

8.Official documents regarding determinations made by administrative agencies or courts: e.g., trademark opposition decisions, trademark invalidation decisions, administrative appeal decisions, and court judgments; and

9.Other information evidencing the fame of the trademark, e.g. evidence of the display of goods or the promotion of services at trade fairs or exhibitions in Taiwan or abroad.

．In judging whether there is a risk of confusion among the public, examiners may refer to the Examination Guidelines on "Likelihood of Confusion.

．The dilution of a trademark includes "dilution of the distinctiveness of a well-known mark" and "dilution of the reputation of a well-known mark."

．If the owner of a well-known trademark wishes to assert that the registration of another's trademark would result in dilution of his well-known trademark, the evidentiary information required in order to demonstrate that his trademark is well-known are the same as that for proving a well-known trademark in general. However, the required standard of persuasiveness of the evidence is higher. For example, with regard to the duration and scope of the trademark's use on goods or services, the duration and scope of advertising and publicity featuring the trademark, or the quantities sold, sales value, and geographical area of sale of trademarked goods or services, the levels required will all be greater.

．When making a judgment as to whether there is a likelihood of dilution of a trademark, the following factors should be considered:

1.The degree of fame of the trademarks;

2.The degree of similarity between the trademarks;

3.The degree to which the trademarks are generally used on other goods/services; and

4.The inherent and acquired distinctiveness of the well-known trademark.