®

Official Journal of the International Trademark Association

Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks By Jerome Gilson and Anne Gilson LaLonde The Practical Significance of the Supreme Court Decision in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. By Michael Machat The Supreme Court’s Allowance That Consumer Confusion May Be Invoked to Defeat Fair Use By Beth S. Brinkmann and Matthew C. Schruers Frankenlaw: The Supreme Court’s Fair and Balanced Look at Fair Use By Jonathan Moskin A “Reading” Test or a “Memory” Test: Which Survey Methodology Is Corrrect? By Jerre B. Swann Recent Trends in Asian Trademark Law—Changes and Challenges By James C. Chao Recent Trends in European Trademark Law: Of Shape, Senses and Sensation By David Vaver Amicus Letter of the International Trademark Association in Bovemij Verzekeringen N.V. v. Benelux Merkenbureau (Europolis) Amicus Letter of the International Trademark Association in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Les Boutiques Cliquot Ltée, Mademoiselle Charmante Inc. and 3017320 Canada Inc.

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July-August, 2005

No. 4

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EDITOR’S NOTE On January 7, 2005, the International Trademark Association presented the first Learned Professors Trademark Symposium in San Francisco, CA, at the offices of Coblentz, Patch, Duffy & Bass LLP. This program was designed to provide an academic perspective on trademark issues for professors of trademark law, jurists hearing and deciding important cases dealing with trademark disputes and novel legal arguments, as well as legal practitioners specializing in trademark law who want to enhance their knowledge of international and comparative trademark law. Three of the world’s leading trademark professors—James Chao, J. Thomas McCarthy and David Vaver—presented comprehensive examinations of global and comparative leading-edge issues and concerns of trademark law and policy, from an Asian, North American and European perspective, respectively. The Trademark Reporter® is proud to publish two of these articles as presented at the Learned Professors Trademark Symposium.

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RECENT TRENDS IN ASIAN TRADEMARK LAW—CHANGES AND CHALLENGES By James C. Chao∗ I. OVERVIEW Protection of trademarks and other types of intellectual property has been a major political concern in Asia. Such concern has invited a continued need to change and modernize Asian trademark law, to be in line with international requirements and expectation as well as the domestic call for enhanced protection, resulting in rapid development in the last decade. Asian jurisdictions have also initiated plans and organized task forces for intellectual property protection.1 The changes were significantly triggered by the WTO negotiations and the need to comply with the Agreement on TradeRelated Aspects of Intellectual Property Rights (“TRIPS”). The Trademark Law Treaty has also played an important role in the procedural aspects. Other factors conducive to the development include the continued political and economic structural changes in some socialist countries, which have called for increased emphasis on economic development and the ensuing need for trademark protection. The trademark applications filed have substantially increased in these countries.2 The move has been toward internationalization and liberalization, resulting in strengthened protection of trademarks. The major changes and developments include, among others, the following aspects: liberalization of registrable trademark formats, relaxation of the distinctiveness requirement, more protection for well-known marks, gradual adoption of a factor analysis approach in determining likelihood of confusion, establishment of special courts or organizations for intellectual property matters, elimination of certain filing requirements, adoption of multi-class

∗

Professor, Chinese Culture University, Graduate School of Law, Taipei, Taiwan.

1. For example, a three-year action plan for thoroughly protecting intellectual property was initiated in Taiwan as of January 2003. At the same time, a police task force for protection of intellectual property was organized. Other Asian jurisdictions, e.g., China, have taken similar measures. 2. The number of applications filed in China in 2003 reached 452,095, versus 132,323 in 1993.

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applications, admissibility of survey evidence, and postregistration opposition. The changes mean challenges. For instance, the factor analysis approach in determining likelihood of confusion would lessen the importance of some mechanical rules regarding similarity of marks and would require an examiner to write a more elaborated opinion in order to reject an application on the ground of confusing similarity. This article will summarize some key Asian trademark areas that have been rich of changes and the impact and challenges of the changes. II. TYPES OF MARKS Some Asian jurisdictions that did not specifically protect service marks, collective marks or certification marks have recently expanded the protection to cover these types of marks specifically. The following is a sample list of some jurisdictions with the expansions: China: service marks, collective marks and certification marks.3 Hong Kong: service marks.4 India: service marks and collective marks.5 Japan: service marks, collective marks and certification marks.6 Singapore: service marks, collective marks and certification marks.7 Taiwan: collective marks, collective trademarks and certification marks.8 III. NON-CONVENTIONAL MARKS The TRIPS provides a broad definition of trademark formats in allowing any distinguishing sign to become a trademark and requires members to register visually perceptible signs.9 In response to such provision, many Asian countries have amended

3. Article 3 of China’s Trademark Law. 4. Section 3(1) of Hong Kong’s Trade Marks Ordinance. 5. Section 2(1)(g) & (z), India’s Trade Marks Act, 1999, effective September 15, 2003. 6. Section 2(1)(i) & (ii) and Section 7 of Japan’s Trademark Law. 7. Section 2(1) of Singapore’s Trade Marks Act. 8. Articles 72, 75 and 76 of Taiwan’s Trademark Law (2003). 9. Article 15(1) of TRIPS.

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their trademark law to allow registration of some non-conventional trademarks, such as marks consisting of sound, smell, single color, combination of colors, and product configuration. The following are some examples of registrable non-conventional marks in Asia: China: any visually perceptible signs, including threedimensional signs and combination of colors.10 Hong Kong: colors, sounds, smells, the shape of goods or their packaging.11 Japan: three-dimensional shapes, colors in combination with other trademark elements.12 South Korea: three-dimensional shapes, combination of colors.13 Singapore: heading, label, ticket, shape, color, aspect of packaging.14 Under the Trade Marks (Amendment) Act 2004, a trademark no longer has to be visually perceptible. This suggests that a sound or smell mark would be registrable. Taiwan: sound, single color, combination of colors, threedimensional shapes.15 The registrability of non-conventional marks has also given rise to ancillary issues, such as distinctiveness and functionality. For example, Taiwan’s Trademark Law of 2003 would render a three-dimensional shape of a product or its packaging nonregistrable if the shape is functional.16 Functionality serves as a fair use defense.17 The applicant must file a drawing of the mark capable of being graphically represented.18 Non-conventional marks are sometimes decided under unfair competition law, especially when the mark in question is not registered. The 2003 Rolex watch case involved issues of trade dress, false advertising and geographical indications. In that case, a Taiwanese company used a watch configuration similar to that used by Rolex. Rolex filed a complaint with Taiwan’s Fair Trade Commission, alleging unfair competition based on the abovementioned issues. The case ended up in the Supreme

10. Article 8 of China’s Trademark Law (2001). 11. Article 3(2) of Hong Kong’s Trade Marks Ordinance. 12. Paragraph I, Article 1 of Japan’s Trademark Law (2002). 13. Article 2(1)(ii) of South Korea’s Trademark Law. 14. Section 2(1) of Singapore’s Trade Marks Act. 15. Paragraph I, Article 5 of the Trademark Law (2003). 16. Item 4, Paragraph I, Article 23 of the Trademark Law (2003). 17. Item 2, Paragraph I, Article 30 of the Trademark Law (2003). 18. Paragraph II, Article 17 of the Trademark Law.

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Administrative Court. The court overruled all of the accusations holding that the watch appearance is not distinctive.19 IV. DISTINCTIVENESS Asian trademark practice had a stringent standard in examining the distinctiveness of a trademark. Many jurisdictions had developed a number of hard rules that tended to render a mark non-distinctive. For example, business slogans, numerals and simple designs were often rejected registration for being nondistinctive. Also, it has been difficult to produce evidence of acquired distinctiveness to the satisfaction of the trademark offices. The “Saline Water Bottle” (yien shui ping) case is illustrative. A PRC biotech company filed a trademark application of the “Saline Water Bottle” mark in 1995 for use on nutritional drinks that were sold in medical-use saline water bottles. The application was rejected for non-distinctiveness. The applicant then used some variations, which were still held to be non-distinctive, despite the fact that the “Saline Water Bottle” brand was awarded the “wellknown brand” in Shanghai for three years and the drinks were sold nationwide through more than 3,000 internet stores with an annual advertising expenditure of 10 million RMB. The mark was finally registered in 2004, almost ten years from the initial filing. In approving the application, the re-examination decision of the Re-examination Committee held that the mark had acquired distinctiveness through long-term and extensive advertising and use.20 It appears that some Asian jurisdictions have recently relaxed the distinctiveness requirement. Some countries have specified in their trademark laws that distinctiveness may be acquired through use.21 The disclaimer mechanism has been introduced to make a mark registrable with the non-distinctive or descriptive

19. Supreme Administrative Court 2003 decision, ref. Pan-1649. The court found that the watch appearance was initially covered by a German design patent, which expired in 1972, and that such appearance has been commonly used and is not distinctive. Therefore, it is not a protectable trade dress, according to the court. Rolex also argued that the Surich watches were not Swiss made because they were not ultimately inspected or certified by the Swiss authorities. The court overruled the argument holding that the movements of the watches were Swiss made and that there was no false advertising. For the issue of geographical indications, see the discussion of geographical indications, below. 20. See http://www.google.com.tw/search?q=cache:bncLo9Pc4J8J:www.nanjingroad. sh.cn/news/showNews.php%3FnewsID%3D22087+%E4%B8%AD%E5%9C%8B%EF%BC%8 C%E5%95%86%E6%A8%99%E6%B3%95&hl=zh-TW&lr=lang_zh-CN|lang_zh-TW. 21. For example, Section 3(2) of Japan’s Trademark Law, Section 6(2) of Singapore’s Trade Marks Act, Paragraph IV, Article 23 of Taiwan’s Trademark Law, Paragraph II, Article 11 of China’s Trademark Law.

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part disclaimed.22 Also, some trademark offices may be more lenient as to a slogan. A slogan like “DRIVING THE WIRELESS FUTURE” (for computer hardware) would not have been registrable ten years ago. The mark was registered in Taiwan after the applicant provided some explanations.23 In South Korea, the court has adopted a totality rule, as opposed to the previous segregation rule, in determining the distinctiveness issue. The word mark HANDYBOX has been viewed as a whole by the Korean Patent Court in determining the issues of distinctiveness and confusing similarity with the HANDY mark.24 It appears that the new rule would render more marks registrable. There is still the question as to whether a descriptive but misleading term may be disclaimed to make the entire mark registrable. Taiwan’s Intellectual Property Office issued guidelines for tobacco products. Under the guidelines, a descriptive term, such as “light” or “low tar,” may mislead the public to believe that the tobacco is not harmful to consumer health and would make the entire mark not registrable. It is therefore not possible for the applicant to disclaim the descriptive term in order to acquire registration.25 V. INFRINGEMENT Asian jurisdictions used to determine the issue of confusing similarity primarily by a comparison of the goods and the marks involved, without putting much emphasis on market factors. The issues were whether the marks are similar and whether the goods are similar.26 In determining similarity of marks, the trademark offices have some rigid rules. For illustration, the languages used in a number of Asian jurisdictions are based on Chinese characters. These characters can be written horizontally either from right to left or

22. For example, Article 19 of Taiwan’s Trademark Law. China’s Trademark Law does not have a specific provision on disclaimer. It is understood, however, that in certain cases the trademark office would allow a non-distinctive part in a trademark to be disclaimed or removed before registration is granted. 23. Trademark registered November 16, 2003, registration no. 01064499. 24. Donghwa Enterprise Inc. v. Commissioner of Korean Intellectual Property Office, 2003 Hu 1932, Patent Court, July 18, 2003. See 94 TMR 488 (2004). 25. Principles for Handling Applications for Registration of Trademarks for Tobacco Goods, issued on October 14, 2002, ref. IP-Tm-0915000028-0. 26. In the United States, for purposes of likelihood of confusion, the term “related goods” is often used to define the outer limit of likelihood of confusion, especially where the goods of two marks are not in competition. The Asian concept of “similar goods” seems to mean a closer proximity of the goods.

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from left to right, both ways being acceptable, although left to right writing seems to be a trend because of western influence and the computer’s inherent feature. The acceptance of both arrangements creates an issue of trademark similarity. In these jurisdictions, the trademark offices may hold two marks consisting of two words arranged differently to be confusingly similar, despite the difference in sight, sound and meaning. For example, the mark “ᚌԺ (yo li)” for nutritional supplements was held confusingly similar to the mark “Ժᚌ (li yo) BETERIODIN” for medicines and iodine.27 Under the recently issued guidelines for determining likelihood of confusion (see below), it is likely that the two marks would not be held confusingly similar. A number of Asian jurisdictions have now added specific provisions using the likelihood of confusion test for infringement,28 to be in line with the TRIPS requirement.29 Similarity of goods or services and similarity of marks do not by themselves constitute an infringement. To deal with the likelihood of confusion test, some guidelines have been issued. For example, Taiwan promulgated the Guidelines for Determining Likelihood of Confusion in 2004. The guidelines list the following factors for determination of likelihood of confusion: (1) strength and weakness of distinctiveness of the trademark; (2) similarity of the trademarks and the degree of similarity; (3) similarity of goods or services and the degree of similarity; (4) the situation that the owner of the prior right has diversified its business; (5) cases of actual confusion; (6) the degree of familiarity with each mark by relevant consumers; (7) good faith in applying for registration of the trademark in question; and (8) other factors. VI. WELL-KNOWN MARKS Pursuant to international requirements for protection of wellknown marks,30 Asian countries have amended their trademark 27. Taiwan High Court decision of 2002, ref. Su-1359. 28. For example, Hong Kong (Section 12(2), (3) & (4) of the Trade Marks Ordinance), Japan (Section 4(1)(xv) of the Trademark Law), South Korea (Article 7(1)(x) of the Trademark Act), Singapore (Section 8(2)(b)), and Taiwan (Items 12 and 13, Paragraph I, Article 23 of the Trademark Law). 29. Article 16(1) of the TRIPS. 30. Article 6bis of the Paris Convention (1967); Article 16(2) and (3) of TRIPS.

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laws or adopted protective measures to enhance the protection. Some jurisdictions, such as South Korea and Taiwan, protect unregistered well-known marks by unfair competition law, instead of trademark law. A well-known mark has generally been protected if there is a likelihood of confusion. The issue is whether the mark has to be used in the jurisdiction in which protection is sought. Earlier trademark practice tended to refuse protection if the mark is not used. Recent trends seem to extend protection to any well-known mark, whether or not it is used in the jurisdiction in question. A 2004 Hong Kong court decision recognized a Taiwanese wellknown mark 塄ᑗ‫( ڍ‬yang le duo) for yogurt drinks to be wellknown in Hong Kong. Although the mark was not used in Hong Kong, the court held that the volume of travel and the “close ethnic, commercial and geographic proximity” between Taiwan and Hong Kong made the mark well-known in Hong Kong.31 The Singapore Court of Appeal sustained an opposition filed on the basis of likelihood of confusion by Tiffany & Co., a jewelry company, against registration of the TIFFANY mark for Fabriques de Tabac Reunies SA on cigarettes. The court held that a wellknown mark is protectible despite the fact that it has not been used in Singapore.32 China defines a well-known mark as “a trademark that is known to the relevant public in China and enjoys a higher reputation.”33 There is no requirement that the well-known mark must be used in China.34 China’s former rules for maintaining a roster of well-known marks have been abolished.35 Whether a mark is well-known will be determined on a case by case basis, taking into account the following factors: (1) the degree of knowledge of the trademark by the relevant public; (2) duration of the use of the trademark; (3) duration, extent and geographical coverage of promotion of the trademark; (4) the record of instances that the trademark has been protected as a well-known trademark; (5) other factors that make the trademark wellknown.36 Japan’s Trademark Law seems to go a step further. It would make a mark unregistrable if it is identical or similar to a

31. International IP update, Freshfields Bruckhaus Deringer, Spring 2004, p.2. 32. Civil Appeal No. 317 of 1998, Court of Appeal, May 28, 1999. 33. Article 2 of China’s Rules for Determining and Protecting Well-Known Trademarks. 34. Article 13 of China’s Trademark Law. 35. The former rules, called “Tentative Rules for Determining and Managing WellKnown Trademarks,” were abolished on June 1, 2003, the date when the Rules for Determining and Protecting Well-Known Trademarks became effective. 36. Article 14 of China’s Trademark Law.

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trademark well-known abroad and if the applicant has an unfair intention.37 The Indonesian DAVIDOFF case involved a proceeding for canceling a registration of the DAVIDOFF mark on the ground of bad faith filing. Contrary to the finding of the lower court, the Supreme Court determined that the registrant was in bad faith and that the DAVIDOFF mark was well-known. It appears from the decision that registrations in various countries supported with promotional materials can prove a mark to be well-known.38 The dilution concept and its similar concepts have also been introduced into Asian trademark law.39 Taiwan’s Trademark Law specifically uses the words “lessen or damage the distinctiveness of a well-known trademark,” to define dilution. Other jurisdictions are not so straightforward. For example, China’s law would bar registration and use of a trademark that is similar to another person’s well-known trademark for use on dissimilar goods if the accused mark “misleads the public thus causing a likelihood of injury to the interest of the registrant of the well-known trademark.”40 The protection of well-known marks against cybersquatting has also been dealt with in Asian trademark law. South Korea amended in 2003 its Unfair Competition Prevention and Trade Secret Protection Act, to strengthen the protection of unregistered well-known trademarks. Cybersquatting of well-known marks would be considered an act of unfair competition which leads to cancellation of the registration of the accused domain name and claims of damages. In Taiwan, the unauthorized use of a French retailing company’s mark “CARREFOUR” as a domain name has been held by the Taipei High Administrative Court to be in violation of a Fair Trade Law provision that requires fair competition.41 VII. ASSOCIATED AND DEFENSIVE MARKS Association registration and defensive registration were popular in Asia and some jurisdictions once under British colonization. Taiwan abolished such system of protection in 2003. The abolition lifts the restriction that an associated mark must be assigned in conjunction with its principal mark, in order to avoid

37. Section 4(1)(xix) of Japan’s Trademark Law. 38. See 94 TMR 441-44 (2004). 39. For example, Section 4(1)(xix) of Japan’s Trademark Law, Item 12, Paragraph I, Article 23 of Taiwan’s Trademark Law. 40. Article 13 of China’s Trademark Law. 41. Taipei High Court Decision of 2000, ref. Shu-1611.

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likelihood of confusion. The new law requires that where two confusingly similar marks are owned by two persons as a result of an assignment, each trademark owner shall add adequate distinguishing signs.42 Japan has also eliminated association registration, but keeps defensive registration. There are very few Asian jurisdictions that still register associated or defensive marks.43 VIII. GEOGRAPHICAL INDICATIONS The TRIPS provisions for geographical indications have been enforced or emphasized in Asia through the following approaches: (1) A geographical indication may be registered as a certification mark.44 In one case, the geographical name of Chih Shang Hsiang, a place in eastern Taiwan, has been registered as a certification mark for locally grown rice, in spite of several unsuccessful oppositions claiming among others that the words “Chih Shang” are a generic term for organic or non-contaminated rice.45 (2) A geographical indication may also be registered as a collective mark.46 (3) A trademark identical or similar to a geographical indication of another country for wines and liquors is not registrable.47 (4) Unauthorized use of a geographical indication is actionable under a special statute. For example, Singapore enacted in 1998 a Geographical Indications Act, which would allow an interested party to sue an infringer and claim certain remedies,48 in addition to the rights available under the Trade Marks Act or the law of passing off.49 The High Court may grant an injunction and/or damages or an account of profits as remedies.50 Similarly, the

42. Article 36 of Taiwan’s Trademark Law. 43. The Asian jurisdictions that register associated and defensive marks include Hong Kong, India, Malaysia and Singapore. 44. For example, Article 16 of the Implementation Statute of China’s Trademark Law and Article 72 of Taiwan’s Trademark Law. 45. Certification marks registered December 1, 2003, registration nos. 00000084 and 00000085. See also Ming Sheng Daily, July 21, A2. 46. Article 16 of the Implementation Statute of China’s Trademark Law. 47. For example, Item 18, Paragraph I, Article 23 of Taiwan’s Trademark Law. 48. Sections 3 and 4 of Singapore’s Geographical Indications Act. 49. Section 12 of Singapore’s Geographical Indications Act. 50. Section 4 of Singapore’s Geographical Indications Act.

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identification shiang bin (champagne) for a sparkling wine has been removed from Taiwan’s acceptable list of goods for registration purposes, in order to protect the French geographical indication “Champagne.” There were 110 registrations as of May 200451 after China first allowed in 1994 a geographical indication to be registered as a certification mark or collective mark, demonstrating the popularity of this type of protection in China. In addition to the protection as a certification mark or collective mark, China has tried to settle the disputes involving geographical indications by administrative measures. For example, Chin Hwa, a loosely defined geographical region in Zhejiang province known for its ham since the Tang dynasty (A.D. 618-907), was designated in August 2002 by the National Directorate General for Quality Control as a geographical indication, covering 120 producers in a region consisting of fifteen counties, cities and districts.52 Protection of geographic indications applies to agricultural products only, according to the Rolex case discussed previously. In that case, the Taiwanese company claimed that its watches were Swiss made. Moreover, the company’s Chinese name means “clock and watch company of Zurich,” with the latter word written as “Surich” in Roman script. Rolex argued that Zurich is a geographical indication for watches and that the use of the similar word Surich would be in violation of Article 22 of the TRIPS Agreement, which covers protection of geographical indications. The court held that geographical indications apply to agricultural products, instead of industrial products such as watches.53 A concept similar to geographical indication was created in China in 2002. This relates to the idyllic paradise “Shangri-La” depicted in the novel Lost Horizon by James Hilton.54 Although the novel portrays the paradise as located in a Tibetan mountain, several counties located in Tibet and adjacent provinces struggled to have their counties renamed as Shangri-La to promote tourism. China’s central government finally awarded the name to Jongdian county in Yunnan province.55

51. See http://sbj.saic.gov.cn/pub/show.asp?id=166&bm=sbyw. 52. The 84th Public Announcement of the National Directorate General for Quality Control. 53. Supreme Administrative Court 2003 decision, ref. Pan-1649. 54. In his novel, James Hilton describes, “The austere serenity of Shangri-La. Its … pale pavilions shimmered in repose from which all the fret of existence had ebbed away.” 55. According to a Civil Department official, the award is worth 500 million RMB.

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In view of the rapid expansion of trademark and other intellectual property matters and for purposes of improving the quality and efficiency of settling intellectual property disputes, some Asian jurisdictions have set up or will set up dedicated intellectual property tribunals. In Japan, an act entitled “the Statute for Establishing an Intellectual Property High Court” has passed the congress and will become effective in April 2005. According to the statute, the intellectual property high court will be set up as a part of the Tokyo High Court with a president and a team of judges of its own to take jurisdiction over trademark appeals.56 In Taiwan, the Taipei High Administrative Court and some other courts have also set aside dedicated judges to try intellectual property cases. X. CHALLENGE—MOVING TOWARD CONSUMER PERCEPTION The recent changes in Asian trademark law show a trend of liberalization and internationalization. They also mean a gradual move toward the market aspects of trademark matters. Facing the new types of protection, Asian trademark offices and courts have tried to adjust and make new rules and guidelines. Trademark owners, practitioners and the public are still coming to grips with the new laws. For example, the registrability of non-conventional marks has posed significant challenges to the jurisdictions involved. When Taiwan first permitted registration of a combination of colors in 1997, a task force was set up to deal with how to examine the first application for a color mark consisting of a combination of the colors red, white and blue for use on gas stations.57 It took about three and a half years for the mark to be registered, compared to an average period of eleven months for a conventional mark application at that time.58 During the extensive period, the guidelines for combination of colors were drafted and promulgated, and the filing and examination had to comply with the guidelines, including the filing of evidence of secondary meaning. Rule making is not easy and takes time. The jurisdictions concerned have used their best efforts to make or amend rules and guidelines to deal with the new types of trademark protection. For

56. See http://www.sipo.gov.cn/sipo/ywdt/hycz/t20040713_31242.htm. 57. The application was filed by the Chinese Petroleum Corporation, a governmentowned oil company, on the first business day immediately following the effective date of the 1997 law. 58. Service marks registered April 16, 2002, registration nos. 00163137 and 00163138.

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example, China has made and amended its laws and rules, including among others Trademark Law (2001), Statute for Implementation of the Trademark Law (2002), Rules for Review of Trademark Matters (2002), Rules for Determining and Protecting Well-Known Trademarks (2003), Rules for Registration and Control of Collective Trademarks and Certification Trademarks (2003), and Implementation Rules for Madrid Trademark International Registration (2003). Other jurisdictions have also enacted or amended related rules to cope with the changes and developments. It appears that there is increased emphasis on consumer perception, which requires inquiry into real life and market factors. The rule of acquired distinctiveness (secondary meaning) requires a fact finder to look into the strength of the mark in the market place and consumer association. The increased emphasis on likelihood of confusion in determining priority and infringement means that the examiners and judges need to take a more flexible approach in deciding the cases. They need to consider a series of relevant market factors, evaluate various types of proofs and write an analytical opinion.59 This means a higher level of difficulty, which requires more time, effort and training. It is yet unpredictable whether this approach requiring the weighing of factors as a whole would finally yield good decisions, although it appears to be a good start.60 Similarly, in deciding the issue as to whether a mark is wellknown, consumer knowledge of the mark based on various relevant market factors needs to be determined. Asian countries have tried to make their trademark laws similar to the laws in other parts of the world. This is good for global protection of trademarks. On the other hand, it is important that each country make the best of the new standards.

59. Asian examiners and judges are used to writing conclusory opinions. 60. When Taiwan’s Intellectual Property Office initiated the formulation of the likelihood of confusion guidelines, it was not without objection or perplexity.