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A trademark shall not be registered if it is identical with or similar to another person's registered trademark or earlier filed trademark for the same or similar goods or services, and hence there exists a likelihood of confusion on relevant consumers, or if it is identical with or similar to another person's well-known trademark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the well-known trademark or mark, as stipulated in Articles 30-1(10) and (11) of the Trademark Act.
According to the Examination Guidelines on Likelihood of Confusion (hereinafter the "Guidelines") published by the Intellectual Property Office, the examiners in charge, when evaluating whether two trademarks are likely to cause confusion, should take into consideration the following criteria: "the strength of distinctiveness of the trademark(s)", "whether the trademarks are similar and the extent degree of similarity between them", "whether the goods/services are similar and the extent degree of similarity between them", "the status of the diversified operation of the prior right holder", "circumstances of actual confusion", "the extent to which relevant consumers are familiar with the trademarks concerned", "whether the applicant of the trademark at issue in question has filed such application in good faith" and "other factors that may cause confusion".
With respect to "the circumstances of actual confusion", the party concerned may present a market survey as supporting evidence according to the Guidelines. Therefore, in trademark disputes cases, market surveys are often used to support their claims, either to demonstrate the actual confusion or the lack of likelihood of confusion.
The Supreme Administrative Court on a trademark opposition in 2004 points out that a market survey can be accepted as evidence only if it has probative value and shows no discrepancy. Where a market survey report is incorrect in respect of sampling area and respondents, the report would not be considered as a reliable evidence with probative value.
The Intellectual Property Court on another trademark opposition in 2012 cited the opinions of the Supreme Administrative Court and specifically states that the method of a market survey must comply with "the principle of a separate observation at different times and places". Since the market survey in this case required consumers to compare the two trademarks side by side, it violated the above principle and must be considered irrelevant.
To sum up, according to the provisions of the Guidelines or the court's current practice, a market survey does have effect over the determination of trademark confusion to a certain extent. However, it is not an easy task to present a valid and flawless market survey in order to support the relevant case.
