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KNOWLEDGE OF PRIOR USE BARS TRADEMARK REGISTRA-TION
Article 37 Item 14 of the Trademark Law pro-vides that no application may be filed for regis-tration of a trademark design that is identical with or similar to a trademark first used by an-other person on the same or similar goods, if the applicant is aware of the existence of that per-son's trademark due to contractual, geographical, or business connections, or any other relation-ship with that person. However, because of the difficulty of proving that a trademark applicant was aware of another's trademark, the previous cases in which either the Intellectual Property Office or the administrative courts held that this provision was breached were those in which the applicant had been a distributor or agent of the other person, or there had been contact between them through other commercial dealings. Only very rarely has it been attempted in practice to show that an applicant was aware of another's trademark due to "any other relationship." However, the facts determined by the Taipei High Administrative Court in a year 2000 trademark opposition case may give some guidance on this point.
In its judgment, the court stated that there was no direct evidence to show that the applicant had been aware before filing the application that the trademark in question was the existing mark of another person. However, the younger brother of the applicant had previously filed an application for registration of a similar trademark, which had been refused, and both applications had been filed through the same trademark agent. Fur-thermore, the applicant used the same telephone number as his brother, and the two brothers conducted the same or similar businesses. Thus it could be inferred that the applicant was already aware through his brother of the existence of another person's trademark.