The Supreme Administrative Court rendered the 104-Pan-9 Administrative Decision of January 15, 2015 (hereinafter, the "Decision"), in which it was expounded that although other relevant evidence should be referenced in case of a famous mark determination disposition which has existed for over three years, still it is not true that a previously concluded legal precedent which has exceeded a certain time threshold has no referential value.
According to the facts underlying the Decision, the Appellant applied to the Appellee to register the "Mitsui" trademark (hereinafter, the "Trademark at Issue"). The Appellee determined as a result of its examination that the registration should be denied since the Trademark at Issue is similar in composition to the trademark forming the basis of invalidation. Dissatisfied, the Appellant brought administrative action pursuant to required procedures. After the administrative complaint was rejected by the original trial court, this appeal was filed.
According to the Decision, the portion concerning "records of successful enforcement of trademark rights, particularly the circumstances where an administrative or judicial agency previously determined that a trademark is famous" among the considerations factors for determining a famous mark under the Famous Mark Protection Examination Criteria, which interpret Article 30, Paragraph 1, Subparagraph 11 of the Trademark Law, merely aims to remind examiners that even though a trademark was determined to be a famous mark in a concluded legal precedent, if over three years has elapsed since the disposition, other relevant evidence should be referenced to make a determination, and such legal precedent cannot be directly cited to support the finding of a famous mark. This does not suggest that a legal precedent in which a famous mark was determined will have no referential value if more than three years has elapsed.
It was further pointed out in the Decision that the trademark forming the basis of invalidation had not been determined to be a famous trademark until relevant factors for determining a famous mark were general considered in the original decision. The original decision was not simply based on a decision on administrative appeal or a determination in a court judgment, not to mention that it was clearly expounded in the original decision that without continuous usage, a certain period of time would have to elapse with successive emergence of goods in the market before the trademark would gradually fade away in the memory of relevant consumers. It is not true that a famous mark can be determined to have been changed from famous to non-famous mark over a short period of time. Therefore, the original decision was not erroneous in upholding the findings in the original disposition which held that the trademark forming the basis of invalidation was a famous mark. The Appellant's appeal was rejected on such basis.