Newsletter
REGISTRATION OF TRADEMARK SIMILAR TO FAMOUS CORPO-RATE NAME NOT PROHIBITED
Article 23, Paragraph 1, Subparagraph 16 of the Trademark Act provides that the name of a fa-mous corporation, firm, or other entity may not be registered as a trademark if such registration would be likely to cause confusion. It is not clear whether the above provision prohibits the regis-tration as a trademark of wording that is similar to but not identical with the name of a famous corporation or other entity. In a 2004 judgment, citing a 1965 judgment of the former Adminis-trative Court (now the Supreme Administrative Court), the Taipei High Administrative Court stated that the above provisions would apply only if a trademark design includes text that is entirely identical with the distinctive portion of another organization’s corporate name.
This decision of the Taipei High Administrative Court has far-reaching implications, as it seems likely to limit the protection available to rights holders. An infringer may easily be able to ob-tain registration of a trademark that is highly similar to, but not entirely identical with, the other corporation’s name. This may indeed harm the interests of both rights holders and consum-ers.