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Supreme Administrative Court Rejects Reverse Confusion Doctrine for Granting Junior Trademark Registration



In Taiwan, trademark registration is on a "first-to-file" basis, and actual use of the trademark is not a prerequisite for an application for registration of the trademark.  The Trademark Act affords the applicant who first files the application the rights to the trademark, whereby an originally non-registered trademark is transformed into a private right of the applicant.

 

However, the function of a trademark and the purpose of a trademark registration are not merely about acquiring trademark rights.  It is only through actual use of the trademark that consumers may come to associate the trademark with the goods or services, so that the trademark can be used to identify the source, guarantee the quality, and advertise the goods/services, thereby realizing the trademark’s value.

 

If a junior trademark, filed later than a registered senior similar trademark, is more famous than the registered senior trademark, whether such a junior trademark should be granted registration as an exception to the "first-to-file" basis due to reverse confusion.

 

The Intellectual Property Court adopted the "reverse confusion" doctrine 2015 and granted a trademark registration for a trademark, which was filed later than a similar senior trademark but has been deemed more famous in Taiwan.  The Supreme Administrative Court reverses the IP Court judgment in 2016 and held the "first-to-file" basis as stipulated by Trademark Act should be consistently cited for protection of the registered senior trademark.  The Supreme Administrative Court specifically rejected the revise the confusion doctrine, which will be a critical guideline for reviewing the trademark registration issues.
 



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