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A Trademark must be Widely Recognized by the General Consuming Public to Deserve Protection under the Trademark Dilution Doctrine
"Trademark dilution" doctrine is based on the premise that some unauthorized acts might weaken the unique connection in consumers' mind between a well-known mark and the trademark owner's goods or services. Under the doctrine, using a well-known mark in connection with the goods or services that are not similar to those offered by the well-known mark owner should still be deemed as trademark infringement.
Article 70-1 and 70-2 in the Trademark Act in Taiwan may be seen as a reflection of the "trademark dilution" doctrine. According to provisions, any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
1. knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark
2. knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark
Based on the language of the above provisions, only registered "well-known" trademarks are eligible for the protection against likelihood of dilution. In the past court decisions, views on the requirement of fame were inconsistent. However, majority of the courts in recent decisions held that a well-known mark should be "widely recognized by the general consuming public" in Taiwan. In other words, a trademark that only enjoys fame in a niche market may not be considered as a "well-known mark" under the above provisions. In a recent civil litigation regarding trademark infringement, the Intellectual Property Court reinstated this position.
The plaintiff in this case was a large retail bookstore chain in Taiwan. The defendant, on the other hand, was a local moving company. The defendant used an identical trademark as the plaintiff on its moving services and also used the trademark as its company name. The plaintiff claimed that its trademark was a well-known mark and the defendant had violated Article 70-1 and Article 70-2 of the Trademark Act.
As the majority approach, the Intellectual Property Court stated that a well-known mark should be widely recognized by "the general consuming public" instead of "the relevant consuming public". The Intellectual Property Court pointed out that the evidence provided by the plaintiff was not sufficient to prove that the plaintiff's mark enjoys fame outside of the area of bookstores. Accordingly, the Intellectual Property Court concluded that the defendant was not in violation of Article 70-1 and Article 70-2 of the Trademark Act.