CHANG TSI
Insights
In year 2024, several prominent brands from Europe and the United States encountered trademark issues in Taiwan. Despite their global recognition, these brands had not registered their trademarks in certain classes, resulting in the successful registration of identical or highly similar trademarks by other entities. This situation poses a significant risk of diluting the value of these well-known brands.
How can we protect well-known trademarks in Taiwan? Drawing from our practical experiences, we offer some valuable insights.
In Taiwan, the protection of well-known trademarks often follows precedents like the Eslite Bookstore case. Eslite, a renowned bookstore in Taiwan, gained fame for operating the first 24-hour bookstore in Asia. Here’s a brief overview of the Eslite case and its implications.
The trademark dispute between "Eslite Bookstore" and "Eslite Moving Company" began when Eslite Bookstore claimed that the latter's use of the term "Eslite" in their company names and services constituted trademark infringement. Eslite Bookstore initiated a civil lawsuit in 2018, which saw a defeat in the first instance, a victory in the second instance, and a remand by the Supreme Court. Ultimately, in August 2023, Eslite Bookstore won the retrial.
1. Trademark Confusion:
The first instance court ruled that the "moving services" covered by Eslite Moving Company’s trademark and the "cargo transportation" services covered by Eslite Bookstore’s trademark were different, thus no confusion occurred.
Both the second instance and the retrial courts found the services to be similar and determined that the use of "Eslite" by Eslite Moving Company could lead to consumer confusion, constituting infringement.
2. Dilution and Detriment of Well-Known Trademarks:
The first instance court held that the "Eslite" trademark had not reached a level of general consumer recognition.
The second instance and retrial courts, however, recognized the "Eslite" trademark as well-known across multiple domains.
The Eslite case highlights the robust protection afforded to well-known trademarks in Taiwan, particularly in the following areas:
1. Cross-Category Protection:
Although primarily associated with bookstores and cultural industries, the court recognized Eslite's diversified operations as reaching general consumer awareness, warranting protection across different categories of goods and services.
2. Confusion and Detriment Protection:
The courts adopted a broad standard for confusion, ruling that potential consumer confusion suffices for infringement, without requiring actual confusion.
In Taiwan, the protection of well-known trademarks under Article 70 of the Trademark Act has a unique and practical approach. The courts have clarified that for the purposes of detriment protection, it is not necessary for a trademark to be recognized by the general public. Instead, it suffices if the trademark is well-known within the relevant consumer group in its specific field. This nuanced understanding ensures that niche but influential trademarks receive the necessary legal safeguards without the stringent requirement of broad public recognition.
In Taiwan, the first step to protecting a well-known trademark is to establish its recognition within the relevant consumer group in its specific field. There are cost-effective and resource-efficient methods to achieve this, and our firm can assist in this process.
The second step is to ensure cross-category usage protection. Taking the famous Eslite Bookstore case as an example, Eslite not only became well-known in its primary business (bookstore/cultural industry) but also successfully convinced the court that their diversified operations warranted protection. This meant that even services as different as moving services were protected under their trademark. For clients whose sales or services in Taiwan are currently limited to certain one or two classes, our firm can provide assistance to help establish a continuous cross-category usage of the brand.
Third, well-known brands must actively enforce their rights to avoid dilution. Eslite Bookstore once faced a situation where the coexistence with Eslite Moving Company for over a decade led the court to initially view them as lax in exercising their rights. However, subsequent evidence successfully persuaded the court otherwise. Therefore, well-known brands need to enforce their rights against highly similar trademarks in non-primary product or service categories to prevent dilution.
Our firm is dedicated to helping clients establish and protect their trademarks in Taiwan, whether through building recognition within the relevant consumer group, ensuring cross-category usage, or actively enforcing trademark rights. We have the experience and expertise to provide practical solutions, ensuring that your brand receives effective protection in the Taiwanese market.
