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IPO CATALOGUE LISTING NO PROOF OF FAMOUS MARK
Article 37 Item 7 of the Trademark Law provides that a trademark may not be registered if its de-sign is identical with or similar to a well known mark owned by another, such that the public may be confused or may misidentify it.
To assist its staff in their work, the Intellectual Property Office compiled a catalogue of famous marks, which it (IPO) published in June 1998. However, it has been disputed in various cases in practice whether the catalogue can directly serve as the basis for determining that a mark is well known, without the need for further supporting evidence.
In a recent judgment in a trademark opposition case, the Taipei High Administrative Court held that when determining whether a trademark is well known, consideration must be given to time factors, and the decision must be based on the facts of the individual case. Related information contained in the above catalogue can only serve as supporting information to assist the court in making its judgment, and cannot be used as the absolute basis for determining whether a mark is well known.