As a principle, Taiwan adopts a “first to file” trademark registration system. Under the system, fame and extensive use are not the requirements for registering a trademark. In addition, under Article 2 of the Trademark Act in Taiwan, the holder of a trademark cannot claim its right under the Act unless the trademark has been registered in Taiwan.
Sometimes, however, the junior user of a trademark is more famous than the senior user/the registrant of the trademark. In this type of situation, it is controversial whether Taiwan Intellectual Property Office (IPO) should grant trademark registration to the junior user since the relevant consumers might actually associate the trademark with the junior user, rather than the senior user/registrant. With regards to this issue, the Supreme Administrative Court had long held the protection of trademark rights should be determined based on the “first to file” principle and the concept of “Reverse Confusion” is not applicable under the current practice in Taiwan. In a recent administrative litigation, the Intellectual Property Court had reiterated this position.
In the administrative litigation case, the plaintiff is a coffeehouse chain in Taiwan. The plaintiff applied for a trademark and designated the goods such as chocolate, confectionary and desserts. The defendant, IPO, rejected the application and cited a senior trademark designated in the similar goods. The plaintiff claimed that the trademark has been known commonly by relevant consumer through the extensive use of the plaintiff. On the other hand, IPO argued that the materials submitted by the plaintiff were not enough to prove that the plaintiff was more commonly known by the relevant consumers.
First of all, the Intellectual Property Court pointed out that under the current practice in Taiwan, the yardstick to determine the priority of trademark rights should be the filing time of the trademarks, not the time of use. In addition, the Court pointed out that the concept of “Reverse Confusion” is not applicable under the current practice in Taiwan. Therefore, even if the plaintiff submitted enough evidence to prove its fame, under the prevailing law in Taiwan, IPO should not grant the registration to the plaintiff given that there was a senior registration filed before the plaintiff’s application.
