AMENDED CRITERIA FOR DETERMINING WELL-KNOWN TRADEMARKS

09/01/2000

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In line with the new provisions of the Trademark Law concerning the protection of well-known trademarks, which came into force on 1 No-vember 1998, in March 1999 the IPO promul-gated its Main Points for Determining a Well Known Mark, pursuant to Article 31 of the Enforcement Rules of the Trademark Law. This year the IPO amended the Main Points which came into force on 10 August 2000.
The amendments follow the scope of protection afforded to well-known trademarks by the Trademark Law. The protection given against dilution of a mark under the WIPO agreements will be discussed as a future amendment to the Trademark Law. It is not covered in the present amendments to the Main Points.

The substantive definitions of related industries and consumers, and the factors to be considered when determining whether a trademark is well known, are adjusted in line with the relevant provisions of the WIPO agreements. Other pro-visions are adjusted in line with trademark ex-amination practice and the spirit of the WIPO agreements.

The main content of the amendments is as fol-lows:

A well-known mark set forth in the Trademark Law refers to a mark which has been generally recognized by the relevant businesses or consumers based on the available concrete evidence pursuant to Paragraph one, Article 31 of the Enforcement Rules of the Law.

The determination of relevant businesses or consumers should be based on the scope of transaction of the goods and/or services to which the mark applies, including but not limited to the following:

1.actual and/or potential consumers of the goods and/or services to which the mark applies;

2.persons involved in channels of distribu-tion of the goods and/or services to which the mark applies; and

3.relevant business operators dealing with the goods and/or services to which the mark applies.

A mark that has been generally recognized by any one of the relevant businesses or con-sumers listed under the preceding paragraph should be deemed a well-known mark.

Determination of a well-known mark should take into account the following factors on a case by case basis:

1.the degree of knowledge or recognition of the mark by the relevant businesses or consumers;

2.the duration, extent and geographical area of any use of the mark;

3.the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presenta-tion, at fairs or exhibitions, of the goods and/or services to which the mark applies;

4.the duration, extent and geographical area of any registration, and/or any application for registration, of the mark, to the extent that they reflect use or recognition of the mark;

5.the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well-known by the administrative or judi-cial authorities;

6.the value associated with the mark; and

7.other factors sufficient to determine a well-known mark.

All the above factors are to be verified by the following evidence:

1.invoices, marketing documents, im-port/export documents and detailed statis-tics data of sales for the goods or services;

2.advertisements in domestic or foreign mass media, such as newspapers, magazines or television;

3.documents relating to the sales outlets and channels of trade or types of distribution;

4.showing appraisal of the mark in markets by traders, ranking in sales amounts, ranking in the advertising expenditures, or the business status relating to the mark;

5.proof of the year when the mark was adopted or created and the proof of con-tinual use of the mark;

6.documents showing registration status of the mark in and/or outside of this country, including registrations made by affiliates;

7.relevant evidence or market survey reports issued by credible organizations;

8.documents showing the recognition made by the administrative or judicial authorities; and

9.other evidence proving the fame of the mark.

A well-known mark is not limited to the mark which has been registered, applied for regis-tration or used in this country.

The use of a mark is not limited to use by the owner itself. Any use of the mark by the owner's affiliates or a third party may be taken into consideration together with the relevant factors.

The proof of use should bear the specimen of the mark and date, or be supplemented by whatever materials which are available to identify the specimen of the mark and date of use. Such proof is not limited to those in the territory of the ROC. However, whether the proof issued outside of the ROC is helpful depends on whether the relevant public in the ROC are given the opportunity to know the mark.

There is no need to present the same proof by the owner of the mark for a well-known mark if the mark was once determined a well-known mark with submission of sub-stantial evidence. However, submission of relevant evidence may be required if deemed necessary on a case by case basis.