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Supreme Administrative Court reveals main points of judgment on Examination Guidelines on Likelihood of Confusion
The most commonly cited provision in Article 30, Paragraph 1 of the Trademark Act of Taiwan that prohibits the registration of trademarks is a trademark which is identical or similar to another person’s registered trademark or earlier filed trademark for the same or similar goods or services, and is likely to cause confusion among relevant consumers.
According to the Examination Guidelines on Likelihood of Confusion, in judging whether two trademarks are likely to cause confusion, the following eight relevant factors should be considered:
a. Level strength of distinctiveness of the trademarks;
b. Whether the trademarks are similar and if yes, the extent degree of similarity between them;
c. Whether the goods/services are similar and if yes, the extent degree of similarity between them;
d. Status of the diversified operation of the prior right holder;
e. Circumstances of actual confusion;
f. The extent to which relevant consumers are familiar with the trademarks concerned;
g. Whether the applicant of the trademark at issue in question has filed such application in good faith; and
h. Other factors that may cause confusion.
The Supreme Administrative Court reveals some main points of judgment on Examination Guidelines on Likelihood of Confusion in an appeal case concerning the trademark opposition in 2023 as below:
- The judgment of whether a trademark is similar and the degree of similarity should be based on the overall trademark design. However, based on the principle of overall observation, there is still the so-called main part. This is because although the trademark is presented as an overall image, what consumers of the goods or services pay more attention to or retain impressions afterwards as the source of identification is the significant and main part of the trademark image. Observation of the main part and overall observation are not in conflict with each other. The main part ultimately affects the overall impression of the trademark on consumers of goods or services. The two are complementary to each other in determining the similarity of the trademark.
- Regarding the familiarity of the relevant consumers with the trademark, the claimant should provide specific evidence to prove the use of the trademark for the goods/services sold. If relevant consumers are only relatively familiar with one of the two conflicting trademarks, the more familiar trademark should be given greater protection.
- The similarity between trademarks and goods or services is the main factor in determining whether there is a likelihood of confusion or misunderstanding. If the degree of trademark similarity is high and the degree of similarity between the goods and services is high, there is a high probability of confusion or misunderstanding. However, if there are other relevant factors, these factors should be taken into consideration so as to accurately determine whether there is a likelihood of confusion or misidentification. Although the degree of familiarity of relevant consumers with each trademark is one of the reference factors to determine whether there is a likelihood of confusion or misunderstanding, the Trademark Act in principle adopts the principle of registration protection in order to avoid any possibility of subsequent marketing of trademarks applied for later which usurp the interests of the first registered trademark owner. The factor of consumers' familiarity with each trademark is not decisive and should still be considered together with other reference factors.