Newsletter
LEGAL BASIS FOR DETERMIN-ING FAMOUS MARKS
Both the Trademark Act and the Fair Trade Act (FTA) expressly provide for the protection of famous trademarks. However, while the Trademark Act refers to "famous trademarks", the relevant wording of the FTA is "a trademark generally known to relevant enterprises or con-sumers", and "a famous foreign trademark not registered [in Taiwan]". The Intellectual Prop-erty Office has then issued its Main Points for Determining a Well-Known Mark, and with reference to the FTA, the Fair Trade Commis-sion (FTC) has issued its Principles for Handling Cases Governed by Article 20 of the Fair Trade Act. However, it is a controversial issue whether or not it is illegal if the court does not cite the above Main Points or Principles to determine the well-known status of a mark.
In a 2006 judgment in a case in which the use of the domain name "decathlon.com.tw" was al-leged to infringe on the trademark "Decathlon" in violation of the FTA, the Supreme Court spe-cifically stated that if, when determining whether a mark was "generally known to relevant enter-prises or consumers" as referred to in the FTA, the lower court had not made a determination according to the afore-mentioned FTC's Princi-ples, then the court's judgment would be illegal. The Supreme Court also noted that the time point to be considered when determining whether a mark was "generally known to relevant enter-prises or consumers" should be the time when application was made for registration of the al-legedly infringing domain name.