Newsletter
THE GUIDELINE FOR DETERMINGING A WELL-KNOWN MARK ANNOUNCED
The Intellectual Property Office (IPO) announced on March 9 the Guideline for Determining a Well-known Mark. The guideline is developed for the purpose of determining whether a mark is well-known and subject to protection afforded by the Trademark Law of the Republic of China (ROC), Taiwan. The protection of a well-known mark is embodied in the Trademark Law as follows:
1.Any person is prohibited from registration of a mark which is identical with or similar to a well-known mark, thus causing confusion to the public with regard to the source of goods, if such registration is not consented by the owner of the well-known mark.
2.A well-known mark may be registered as a defensive mark for those goods which are unrelated to the goods covered by the principal mark. As compared to a well-known mark, a mark which is not well-known to the public can only be registered as a defensive mark for the goods which are related to those covered by the principal mark.
The Guideline includes the following points:
1.A well-known mark refers to those marks which have been commonly known to the relevant public of the ROC, due to extensive use. The expression commonly known to the relevant public means considerably well known to most of the public who normally or probably purchase the goods or services covered by the mark.
2.Registration in the ROC is not a prerequisite to be a well-known mark. Those marks which have not been registered in the ROC but have complied with the requirements outlined in this guideline are also deemed well-known marks.
3.To determine whether a mark is well-known, the following factors should be taken into account:
1)The duration and geographical scope of use of the mark.
2)The scope of goods or services on which the mark is used and the sales volume of the goods or services.
3)The form, quantity, duration and extent of advertising and publicity.
4)The types of distribution, channels of trade or sales outlets of the goods or services.
5)The degree of distinctiveness of the mark.
6)The scale of business of the owner of the mark and the possibility for diversification of the business.
7)The appraisal by traders or consumers.
8)Other factors available to determine whether a mark is well-known or not.
4.To verify the factors listed in the preceding paragraph, the following documents are required:
1)Invoices, marketing documents for selling goods or services in domestic markets, import/export documents and detailed sales amounts and volumes.
2)Continual advertisements in domestic or foreign newspapers, magazines, television or other mass media.
3)Documents relating to the sales outlets and channels of trade or types of distribution throughout the ROC.
4)Documents showing appraisal of the mark in the market by traders, ranking in sales amounts, ranking in the advertising expenditures, or the business status relating to the mark.
5)The proof regarding the year when the mark was adopted or created and the proof of continual use of the mark.
6)Documents showing registration status of the mark in and/or outside of the ROC.
7)The documents issued by the chamber of commerce, related association or other authentic organization, or market survey reports.
8)Documents showing the comments or holding made by the competent authorities.
9)Other proof regarding the fame of the mark.
5.Use of a mark is not limited to use by the owner itself. Any use of a mark by the owner's affiliate or a third party which is helpful to promote the fame of the mark may be taken into consideration together with the items set forth under Paragraph 3.
6.The proof of use of a mark should bear the specimen of the mark and date, or be supplemented by whatever materials are available to identify the specimen of the mark and date of use. Such proof needs not be issued in the territory of the ROC. However, whether the proof issued outside of the ROC are helpful depends on whether the relevant public in the ROC are given the opportunity to know the mark.
7.Where a well-known mark per se is violative of good morals or the well-known status thereof is acquired due to violation of good morals, law or regulations, it will not be accepted as a well-known mark.
8.To determine whether a mark is well-known or not, the IPO should take into account the factors listed in Paragraph 3 together with the proof outlined in Paragraph 4 above, to the extent that the fame of the mark is not known to the public.
9.The well-known status should exist at the following time:
1)Where a mark is applied for defensive trademark registration, the well-known status should exist at the time of filing.
2)Where a mark is alleged to be identical with or similar to a well-known mark and thus is not registrable, the well-known status should exist at the time when the mark was filed.
10.There is no need to present proof of a well-known mark if the mark was once held as a well-known mark with submission of the relevant proof within the past two years. The IPO may still request submission of the proof for a particular case, if necessary.