Protecting famous trademarks is an important issue in every country including Taiwan. To strengthen protection for famous trademarks, the Intellectual Property Office (IPO) promulgated the Examination Guidelines on Protection for Famous Trademarks in Article 23-1-12 of the Trademark Law on November 9, 2007. These guidelines provide the Examiners the examination basis for determining famous trademarks during trademark application, opposition and invalidation action procedures.

Article 23-1-12 of the Trademark Law stipulates that “a trademark application shall be rejected if it is identical or similar to another person's well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark.” Said provision reveals that protecting famous trademarks should not only prevent possible confusion or misconception for the origin identified by famous trademarks but also avoid dilution of the distinctiveness or reputation of famous trademarks. Such two situations have different theoretical basis and application scopes.

The situation “possible confusion or misconception” is made to avoid relevant consumers from being confused by or misconceiving the origin of goods/services used under the disputed mark and the famous trademark. The other situation “possible dilution of the distinctiveness or reputation of famous trademarks” is made according to Article 6-2 of the Paris Convention and Article 16.3 of the TRIPS Agreement to provide different protection for famous trademarks. It is used to prevent weakness to the distinctiveness of , or damage to the reputation of famous trademarks.

The Examination Guidelines on Protection for Famous Trademarks in Article 23-1-12 of the Trademark Law provide detailed statement and examination criteria for the aforesaid situations. The Examiners can consult said guidelines to determine if registration of the disputed trademark in an opposition or invalidation action will violate Article 23-1-12 of the Trademark Law.