chapter  22
14 Pages

Taiwan IP Court decisions tend to treat likelihood of confusion and likelihood of dilution as mutually interchangeable

WithKung-Chung Liu, Fa-Chang Cheng

The Taiwan Intellectual Property Court ruled in its capacity as the first instance court that the well-known trademark and the alleged infringing trademark at dispute were not the same or similar, and therefore neither likelihood of confusion nor dilution of the plaintiff’s well-known trademark occurred. The 2003 revision of the Trademark Act introduced for the first time the protection against dilution. The present decision recognised the strong similarity between the trademarks of the plaintiff and the defendant. To avoid a zero-sum result for the defendant, the legislature should contemplate the desirability of putting a time bar for well-known trademark owners to resort to the protection against the likelihood of dilution, such as before the renewal of the diluting mark’s registration. The court further found that was a well-known trademark between its first actual use and trademark registration, and continued to be one after the registration of the mark.