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China's Well-known Trademarks May be cited as Supporting Evidence for Taiwan's Famous Trademarks
The famous trademarks in Taiwan may not only possibly prohibit others in registering the same or similar logo in Taiwan even if such famous trademarks are not registered in Taiwan, but may also cease others in using such famous trademarks as trademarks, enterprise names or domain names in Taiwan according to the Trademark Act of Taiwan.
The famous trademarks may be protected only if the trademarks are famous in Taiwan. However, it does not mean that all of evidence to prove the famous status in Taiwan needs to be occurred in Taiwan. Any supporting evidence around the world, which may be useful in determining the famous status in Taiwan, might be accepted in the specific dispute cases in Taiwan by the Intellectual Property Office (IPO, the Trademark and Patent Office in Taiwan), the Ministry of Economic Affairs (MOEA, the authority in Taiwan in charge of the administrative appeal for trademark or patent matters) or the Intellectual Property Court (the specialized court in Taiwan in charge of IP litigations).
After the Cross-Strait Agreement on Intellectual Property Right Protection and Cooperation was signed on 29 June 2010 between Taiwan and China, and took effective on 12 September 2010, Taiwan and China had establish good channels and held several meetings, forums or seminars to implement the Agreement and to resolve various disputes. Nonetheless, one of debatable issues, which had been raised for the Agreement, is whether the China's well-known trademarks may be directly deemed the famous trademarks in Taiwan, and may then be definitely granted protection in Taiwan in accordance with the Trademark Act of Taiwan.
In an administrative litigation for the trademark opposition case in 2014, the IP Court had took the factor of the granting in China of a well-known trademark into consideration when the IP Court reviewed and determined whether the cited trademark may be considered to be famous in Taiwan.
Nonetheless, the IP Court also pointed out in another opposition case in 2014 that whether the fact of determination in China as a well-known trademark may be cited as evidence to support its famous status in Taiwan should also evaluate the categories of the goods or services in which fields the trademark is granted well-known. The IP Court specifically mentioned in this case that the cited trademark is well-known in the field of foods relevant goods or services but the disputed trademark is used and registered in the shampoos relevant goods and services. Without any further supporting evidence, the well-known status in the fields of food relevant goods or services cannot be cited as evidence to prove that the cited trademark is also famous in the field of shampoos relevant goods or services.