2. In the law, the term "famous trademarks or marks" means those trademarks and marks that are commonly known to the relevant public over an extensive area of this country.

The phrase "over an extensive area of this country" means circumstances under which the use of trademark or mark has already reached extensive coverage in the entire country.

The phrase "commonly known to the relevant public" means circumstances under which the trademark or mark has become familiar to a large number of the public who frequently come into contact, or may come into contact, with the goods or services with which such trademark or mark is used.

3. In accordance with the Trademark Law, registration in Taiwan is not required for a trademark or mark to be famous; these criteria shall also apply to trademarks and marks that are not registered in Taiwan, but that comport with the provisions of these criteria.

4. The determination as to whether a trademark or mark is famous shall be based on a judgement that consolidates the following elements:
• duration and geographical area of the trademark or mark's use;

• scope and sales volume of the goods or services covered by the trademark or mark;

• method, volume duration, and extent of advertisements and promotion;

• distribution channels and sales outlets of the goods or services;

• degree of the distinctiveness of the trademark or mark;

• the scale and the potential for diversification of the business of the rights holder of the trademark or mark;

• assessment by fellow mernbers of the trade and consumers; and

• other elements that support a determination that the trademark or mark is famous.

5. The following evidence may be used to substantiate the elements referred to in article 4 of these criteria:
• sales invoices, distribution bills, import documentation and its related materials for calculating sales volume of goods and services;

• domestic and foreign advertising materials from newspapers, magazines, and television;

• circumstances of the points of sale and distribution channels throughout the country;

• assessments from fellow members of the trade of the trademark or mark in the market, ranking in terms of sales and advertising volume, or the status of the relevant business operations;

• duration of the trademark or mark's use since its creation and proof of continuous use;

• domestic and foreign registrations of the trademark or mark;

• Ietters, market survey reports or other materials issued by trade associations, relevant associations, or other credible organizations;

• opinions of, or related determinations made by relevant competent authorities; and

• other material that serves as evidence that the trademark or mark is famous.

6. Use of a trademark or mark for purposes of determining fame under these criteria is not limited to the use of the trademark or mark by the rights holder; use by the rights holder's affiliate or third parties that contributes to the fame of a trademark or mark may be included for consideration in accordance with article 4.

7. Materials that are used as evidence of use of a trademark or mark shall bear the device of the mark and the date, or materials should be provided that indirectly indicate the mark and the date. Evidence is not limited to domestic materials; provided, the judgments as to fame shall be based on the knowledge of the relevant public in this country.

8. Evidence of the fame of a trademark or mark may not be considered where the trademark or mark itseIf violates good morals or customs, or where in the course of attaining fame there were violations of good morals or customs or violations of laws or regulations.

9. The determination as to whether a trademark or mark is famous shall be made by the agency with authority for trademarks (the Trademark Office) after consolidating the elements set out in article 4 based on the evidence set out in artide 5; provided, this limitation shall not apply to facts that are commonly known to the public.

10. The point in tirne for making a determination as to whether a trademark or mark is famous shall be as follows.
• The point in time for making a determination as to whether a trademark is famous for purposes of the proviso article 22-2 of the Trademark Law is the time at which the application for registration was filed; this shall also apply to service marks.

The point in time for making a determination as to whether or not a trademark or mark is famous for purposes of article 37-1-7 of the Trademark Law shall be the time at which another person applied.

11. With respect to evidence that has been successfully used to obtain a determination by the Trademark Office that a trademark or mark is famous, and where less than two years have elapsed since such determination, it may not be necessary to present identical evidence; provided, where required by the needs of a case, the Trademark Office may request the rights holder of a famous trademark or mark to provide relevant evidence.

ENDNOTES

This translation is based on the regulations attached to the announcement of the Intellectual Property Office (IPO), (88) Chih Shang 980 Tzu. No. 204595.

The Taiwan Trademark Law provides for "trademarks" and "marks", the latter being comprised of service marks, collective marks and certification marks.

© 1999 Robin J Winkler, Qi Lin International Law Offices