The Supreme Administrative Court rendered the 104-Pan-72 Decision of February 5, 2015 (hereinafter, the "Decision"), pointing out that the products bearing the trademark have a high global market share and have been massively marketed and promoted domestically after a company was set up in Taiwan. Therefore, it can be concluded that such trademark is more distinctive in the domestic market and is familiar to relevant consumers and operators.
According to the facts underlying the Decision, the Appellant designated the "Dunler and Device" trademark (hereinafter, the "Trademark at Issue") for use on products such as tires, inner and outer tires and tire patches and registered the trademark with the Intellectual Property Office. The Intervenor filed an opposition against the Trademark at Issue on the ground that it is similar to the DUE LER (Registration No. 1246834) and the "DUELER H/P SPORT" trademarks, which formed the basis of opposition, in violation of Article 23, Paragraph 1, Subparagraph 12 (i.e., being identical or similar to a famous mark of another party; subsequently revised as Article 30, Paragraph 1, Subparagraph 11 of the same law) and of Subparagraph 13 (i.e., being identical or similar to a registered trademark of another party or a trademark which is registered earlier; subsequently revised as Article 30, Paragraph 1, Subparagraph 11) of the Trademark Law as amended on November 28, 2003 and effective at the time of registration. The Intellectual Property Office subsequently rendered an administrative disposition which rejected the opposition (hereinafter, the "Original Disposition"). Dissatisfied with the Original Disposition, the Intervenor filed administrative appeal, which caused the Appellee to render a decision on administrative appeal which "set aside the Original Disposition for the original disposition agency to render another legally appropriate disposition." Dissatisfied with the decision on administrative appeal, the Appellant brought administrative action in which it did not prevail and then filed this appeal.
According to the Decision, if a trademark which has been created and used has been extensively marketed globally and registered in over 40 countries with products enjoying a 19.1% share of the global market share and 49 factories in all parts of the world, and if massive marketing and promotion have been conducted after a company was set up in Taiwan, it is certainly sufficient to conclude that such trademark is commonly seen in the domestic market and is familiar to relevant consumers and operators is more distinctive than other ordinary trademarks. It was further held that if the Trademark at Issue, which is similar, is allowed to register for use on the same or highly similar classes of goods for which the trademarks forming the basis of opposition are designated, relevant consumers would misidentify and be confused.
Although the Appellant contended that the Intervenor had failed to provide evidence supporting that the trademarks forming the basis of opposition enjoy high sales volumes in Taiwan as well as relevant reports in magazines and media in order to show that the consumers are aware that such trademarks exist in the market. According to the evidence produced by the Appellant in the original trial, no information could be found when the trademarks forming the basis of opposition were searched. This shows that there is no fact of promotion, sale or use of the trademarks forming the basis of opposition in Taiwan.
In this matter, however, the Appellee set aside the disposition which rejected the opposition as rendered by the original disposition agency on the ground that the Trademark at Issue violates Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law and ordered the original disposition agency to render another legally appropriate disposition. Both parties only disputed during the original trial whether the Trademark at Issue violate Article 30, Paragraph 1, Subpargraph 10 of the Trademark Law (see Pa ges 182-184 of the original trial dossier). However, Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law does not require a registered trademark of another party to be a famous mark as a precondition and has no bearing on the determination of whether the Appellant's Trademark at Issue violates Article 30, Paragraph 1, Subpargraph 10 of the Trademark Law.