Chinese (Mandarin) is the national language in Taiwan. To expand the market in Taiwan, many foreign companies will select the Chinese translation or transliteration of their foreign brands as locally used brands (trademarks) so that the consumers in Taiwan may identify more easily. However, in Chinese language, one character may have multiple pronunciations or meanings. Given this, one foreign trademark might have multiple alternative ways of Chinese translation or transliteration.
When comparing a foreign trademark with its Chinese translated or transliterated version on their own, there might not be similarity between the two under the traditional standard of trademark similarity. Accordingly, when the Chinese translated or transliterated version of a foreign trademark was applied or registered as a trademark in bad faith, it has been uncertain whether there is a likelihood of confusion under the current practice in Taiwan. In a recent administrative case regarding a trademark opposition, the Intellectual Property Court had addressed this issue and held in the instant case that if the applicant maliciously knew the likelihood of confusion and still applied for the Chinese translated or transliterated version of a foreign trademark, the application is considered to be filed in bad faith and should not be accepted. Continue Reading