The following statements are excerpted from a ruling made in February 2007 with respect to reverse confusion, which was the first precedent in Taiwan.

Though a well-known mark enjoys a broader protection, this does not mean that an unregistered well-known mark will be absolutely accepted for registration in Taiwan. If an identical or similar mark used for the same or similar goods or services have already been registered, the application of said well-known mark should also be examined as to whether Article 23-I-13 of the Trademark Law is applied. Thus, the junior applicant has to prove that there is no likelihood of confusion.

In trademark infringement cases, reverse confusion has been taken into consideration when use by the senior registrant is not as strong as use by the junior registrant, thus, consumers may likely misidentify the origin of the goods or services to be provided by the junior registrant. Although the junior registrant does not intend to pass off the senior’s goodwill, its use will affect the senior’s trademark value. Therefore, if reverse confusion occurs, it is likely that confusion will ensue and the junior owner may be responsible for damages on account of infringement. According to court practices in the U.S.A. and Taiwan, there are precedents discussing reverse confusion.

In the subject trademark dispute, the opposed mark, a well-known mark, is similar to the opposing mark and both are used on the same or similar goods. With high similarity on the marks and designated goods, general consumers may possibly identify the goods of the opposing mark as those of the Plaintiff (the opposed proprietor)

The foregoing case summary of the Taipei High Administrative Court is the first case in which a judgment of reverse confusion was delivered.

In most trademark infringement or dispute cases, well-known trademark proprietors normally enjoy broader protection to prevent a younger similar mark launching in the same or similar market. The following factors are commonly used to determine a well-known mark: the length of its use; the quantity of the goods sold or services provided; the expenditure of its advertisement or promotional activities incurred; the medium used; or the trademark registrations particulars. Although millions of marks have been registered in Taiwan, not every one can be deemed a well-known mark.

Compared to “direct confusion”, reverse confusion provides an alternative analysis in determining whether the senior registrant will be barred from using its mark when general consumers have developed greater recognition of the junior mark.

According to the current Trademark Law and practices in Taiwan, the first registrant is entitled to the trademark registration. However, if a trademark owner uses an identical or similar mark in the same or similar goods or services prior to said registrant, the said user has the right to use its mark as already used. Nevertheless, no statutory regulation provides for reverse confusion. Similarly in the U.S.A., federal courts adopted the doctrine of reverse confusion allowing a small company, the senior user of a mark, to recover against a large, well-known junior user of a similar mark if consumers are likely to think that, as a result of the large company’s expansive advertising, the small company is the infringer.

The foregoing case was remanded by the Supreme Administrative Court on the ground that some factors were not observed by its prior decisions, not because of reverse confusion of the relevant parties. Since this is the first ruling regarding reverse confusion, we expect that more courts will take this ruling into consideration either in administrative suits or in civil and/or criminal court actions.

(Author:Frances CHEN has an LL.B. degree in law. She joined Tai E immediately after graduation and has been the head of the Foreign Trademark Department for many years. She has experience in trademark applications in-bound and out, contentious trademark cases and copyright and domain name registration. She also has interests in comparing IP systems around the world.)