Draft guidelines for assessing likelihood of confusion issued

The Taiwanese Intellectual Property Office (IPO) has issued draft guidelines on the examination of whether a likelihood of confusion exists between conflicting marks. An examination of the likelihood of confusion is a requirement of the new Trademark Law, which came into effect in November last year (see Taiwan promulgates new, broader trademark law).

The guidelines indicate that when assessing the likelihood of confusion between a prior registered mark and a proposed registration, the following elements should be considered:

• The distinctiveness of the trademarks.
  
  
• The level of similarity between the marks.
  
  
• The level of similarity between the goods and/or services covered by the marks.
  
  
• The relative strength of the prior right owner in the marketplace.
  
  
• Evidence of bad faith on the part of the applicant.
  
  
• Any indication of actual confusion.
  
  
• The level of recognition within the relevant consumer group.
  
  
• Any other significant elements, such as the trade and distribution channels for the goods and/or services covered by the marks.

These elements interact with each other so that the weight of evidence that exists for one element may influence the burden of proof for the others. For instance, if there is unequivocal evidence of bad faith on the part of the applicant, the burden of proof for the other elements may be greatly reduced. In contrast, the long-term coexistence of the trademarks in either the Trademark Registry or the marketplace may increase the difficulty in establishing a likelihood of confusion.

In addition to confusion as to the origin of the goods and/or services covered by conflicting trademarks, the guidelines also deal with the potential for association between the different users of the trademarks concerned, such as licensees, franchisees or related companies.

The deputy director general of the IPO has also announced that the guidelines, once finalized, will be followed by all examiners at the IPO. However, they will not be applied on a mandatory basis within the judicial system. Nevertheless, since the guidelines are based on a composition of a number of court judgments, they are likely to be accepted and applied by the judiciary.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei