Well-known trademarks, whether registered or not, are entitled to a greater degree of protection to maintain their distinctiveness and reputation. The determination of well-known status must be based on domestic consumers’ recognition, along with factors such as distinctiveness, the level of recognition, the extent of use and promotion, registration status, and enforcement records[1]. For foreign trademarks, the duration, scope and geographical reach of their use and promotion are particularly important. That is, foreign trademarks seeking well-known status in Taiwan must provide sufficient evidence to prove that their fame has reached local consumers.

  This principle was reaffirmed in a recent judgment. The Taiwan Intellectual Property and Commercial Court (“IPC Court”) revoked an opposition decision to cancel a disputed trademark registration based on the fame of an unregistered trademark (“the opposing mark”). The IPC Court held that the opposing mark had failed to prove its well-known status in Taiwan[2].

  To obtain a higher level of protection, trademark owners must submit substantial evidence to demonstrate that their trademarks are well-known. According to Taiwan’s Examination Guidelines for the Protection of Well-known Trademarks, relevant evidence includes sales and distribution data, advertising records, sales locations and channels, market evaluations, trademark history, registration records, market surveys, and past administrative or judicial decisions. These factors collectively determine whether a trademark is eligible for enhanced protection under Taiwan’s Trademark Act[3].

  In the present case, 林承箕 (LIN,CHENG-JI), an individual applicant, registered the disputed trademark (See Fig.1) under Class 5 and Class 44 for dietary supplements and medical services. The opposing party, a French pharmaceutical company LABORATOIRES THEA, filed an opposition. It asserted that its “half-eye logo” trademark (See Fig.2 ), though not previously registered in Taiwan, had already attained well-known status. The opposing party argued that the disputed trademark violated Article 30(1)(11) of the Taiwan Trademark Act by creating the likelihood of confusion among the relevant public and diluting the distinctiveness and reputation of its well-known trademark. The opposing party further stated that its mark had been extensively used and promoted worldwide, including in Taiwan. The Taiwan Intellectual Property Office (“TIPO”) ruled in favor of the opposing party, finding that the applicant’s trademark registration should be canceled due to the likelihood of consumers confusing it with a well-known mark. The applicant (the “plaintiff”) challenged this decision, firstly filing an administrative appeal, ultimately leading to an administrative lawsuit in the IPC Court, which overturned the original decision.

  In the first instance administrative litigation proceedings, the court believed that the judgment would affect the opposing party LABORATOIRES THEA’s rights and legal interests and therefore ordered the opposing party (the “intervener”) to intervene in the proceedings.

  During the administrative litigation proceedings, the plaintiff argued that the intervener had not provided sufficient evidence of market presence in Taiwan, including sales, market share or advertising impact. It also contended that the trademarks were visually distinct, designated for different goods and services, and marketed through separate channels, making confusion unlikely. By contrast, the intervener countered that it operates globally with subsidiaries and distributors, has extensive trademark registrations, and its products are available online, some priced in New Taiwan dollars and shipped internationally. The intervener further asserted its long-standing recognition in the field of ophthalmic treatments and that its mark was widely known among industry professionals. Additionally, it claimed that the two trademarks had highly similar designs, leading to a risk of consumer confusion and dilution of the distinctiveness of its trademark.

  After reviewing the arguments and evidence, the court first reasoned whether the establishing of well-known status is a prerequisite for determining any violation under Article 30(1)(11) of the Taiwan Trademark Act. The court found that the intervener had failed to establish the well-known status of the opposing trademark at the time of registration of the trademark in dispute, even though the court might have implicitly considered the two marks to be similar. Although the intervener owned multiple trademark registrations worldwide and operated in various countries, it had not provided sufficient evidence of actual sales, advertising or consumer recognition in Taiwan. Advertisements and sales records from Hong Kong and other regions do not automatically establish market recognition in Taiwan. Furthermore, Taiwan does not have a point of distribution so there was no way for physical sales to be made to local consumers. The court also considered online advertisements and sales data but found no clear indication that a significant number of Taiwanese consumers were familiar with the brand. In addition, the court also reviewed the intervener’s website traffic and purchase records, but did not find any evidence of actual purchases locally. The court concluded that the intervener had failed to convincingly demonstrate widespread recognition among local consumers, resulting in the TIPO’s cancellation decision being revoked.

  This judgment emphasizes that trademark oppositions based on well-known status must be substantiated by strong evidence of market recognition in Taiwan. A trademark’s international reputation does not automatically extend to Taiwan; the element of fame must be proven locally. That is, foreign trademark owners seeking well-known status in Taiwan must provide clear and verifiable evidence of domestic market recognition and consumer awareness, rather than relying solely on their international reputation. Without such evidence, an opposition claim based on well-known status is unlikely to succeed.

  In this case, the scope of the court’s analysis was limited to whether the intervener LABORATOIRES THEA’s trademark had attained well-known status in Taiwan. Since the mark was not registered locally, the intervener needed to first establish its well-known status before claiming protection under Article 30(1)(11) of the Taiwan Trademark Act. Because the intervener failed to meet this requirement, the court did not further examine the likelihood of confusion and dilution.

  In conclusion, while Article 30(1)(11) of the Taiwan Trademark Act protects both registered and unregistered well-known trademarks, the establishment of well-known status remains a decisive threshold. Without sufficient evidence, protection of well-known trademarks may not be obtainable. Furthermore, to enjoy stronger and more comprehensive protection, foreign trademark owners are encouraged not only to provide sufficient evidence of their well-known status within the jurisdiction but also to register their trademarks locally. A registered trademark provides a more solid legal foundation and ensures greater security in terms of enforceable protection.

Fig.1: Taiwan Trademark Registration No. 02139781

Fig.2: LABORATOIRES THEA “half eye logo” trademark