The concept of reverse confusion seeks to protect the identity of a less well-known but senior trademark from being overshadowed or diluted by a more familiar but junior trademark. Conversely, the holder of the junior mark may argue for coexistence by demonstrating that there is no occurrence of reverse confusion and that the relevant consumers are able to distinguish between the two trademarks through extensive use.

 

  In Taiwan, according to the Examination Guidelines on Likelihood of Confusion, consumer familiarity is a factor to consider during the examination process for a trademark registration application. Coexistence may be permitted when consumers are familiar with both conflicting trademarks, with the trademark more familiar to consumers generally receiving greater protection.[1] However, since Taiwan strictly adheres to the first-to-file principle, consumer familiarity—a key factor in the concept of reverse confusion—does not play a decisive role. Taiwan’s preference for the first-to-file principle over the concept of reverse confusion was clarified in a 2019 judgment and reaffirmed in later cases.

 

  In the 2019 case, the Taiwanese coffee chain Crown&Fancy challenged the TIPO’s rejection of its trademark application (See Fig.1).[2] The rejection was based on the likelihood of confusion with earlier registered trademarks (See Fig. 2) under the same Class 30, covering baked goods and desserts. In the trial, the plaintiff argued that the two trademarks were dissimilar and presented evidence demonstrating that the disputed trademark had become highly distinctive through use. The plaintiff further asserted that the application had been made in good faith, contending that the trademark deserved greater protection.

 

  The IPC Court upheld the rejection, citing significant similarities in appearance between the disputed and cited trademarks and their association with similar goods. The court found no substantial evidence to support the idea that consumers were more familiar with the disputed trademark. Additionally, the overlap of marketing channels and the shared geographical markets were also identified as factors increasing the likelihood of confusion among consumers. Moreover, the court raised doubts about the plaintiff’s good faith, suggesting that the plaintiff might have been aware of the cited trademarks before filing its application. To conclude, the court emphasized that the cited trademarks, being the earlier-registered marks, were valid and deserved prioritization.

 

  More importantly, the court also reaffirmed that Taiwan does not recognize the concept of reverse confusion. In other words, even if the junior mark is more well-known, it cannot override the rights of the senior mark holder. This strict adoption of the first-to-file principle ensures fair market competition and prevents larger or financially dominant entities from exploiting their influence to gain unfair control over the trademark rights.

 

  This judgment highlights Taiwan’s firm commitment to the first-to-file principle. Applications for newer and more familiar albeit later trademarks would be rejected if there arose the likelihood of confusion between them and the senior marks. Even if the senior mark was neither highly renowned nor widely recognized, the owner of the earlier-registered trademark would still retain the right to protection under the law.

 

  The consistency of opinion was further demonstrated in two following judgments.

 

  In the first case, Beauty Garage Taiwan, representing the Japanese nail polish brand Ray Gel, applied to register a trademark featuring the name “Ray gel” combined with a moon and diamond design (See Fig.3). The TIPO rejected the application on the grounds of likely confusion with senior marks containing the word “RAY”, which were registered for similar goods under Class 3 (See Fig.4). Following an unsuccessful administrative appeal, Beauty Garage filed an administrative lawsuit. [3]

 

  In the meantime, while emphasizing the distinctiveness of the disputed trademark, the plaintiff submitted evidence of the coexistence of similar trademarks in other jurisdictions. For example, in Japan, both “Ray gel” and “RAY” were registered without issue. The plaintiff also argued that no actual confusion had arisen between the trademarks since their uses, purposes and consumer bases were different.

 

  After further review, the IPC Court upheld the rejection. The court found significant similarities between the disputed and cited trademarks in terms of appearance, concept and pronunciation. They were both registered for related cosmetic and personal care products, which often have shared users, functions and manufacturers. These factors increased the likelihood of consumer confusion regarding the source of goods.

 

  The court also questioned the plaintiff’s good faith in view of the similarity with the existing registered trademarks. Overlapping target markets and marketing channels were cited as factors exacerbating consumer confusion. Although the plaintiff provided evidence of marketing efforts and collaborations, the court deemed it insufficient. The absence of consumer usage data or notable endorsements meant that there was no clear indication of greater consumer recognition of the disputed trademark. The court also reiterated that trademark protection is territorial in nature, emphasizing that foreign registration (for example, registration in Japan) does not guarantee approval in Taiwan.

 

  Ultimately, the court ruled to uphold the TIPO’s rejection decision, meaning that the disputed trademark could not be registered under the Taiwan Trademark Act. The court stressed that priority is given to protection for senior marks, even when the later-registered trademark is more renowned or more internationally recognized.

 

  The second case involved Bo Yuan International Restaurant Company, which applied to register the trademark “WOOTEA” (See Fig.5) under Class 43, covering services such as cafés, snack bars and restaurants. The application was originally approved in 2020. Subsequently, the trademark holder of “WOO CHA” (See Fig.6), a market competitor, opposed the “WOOTEA” registration. The opposition resulted in the revocation of the disputed “WOOTEA” trademark, and this decision was later upheld in an administrative appeal. Unsatisfied with the outcome, Bo Yuan subsequently filed an administrative lawsuit. [4]

 

  The plaintiff contended that “WOOTEA” was distinct from “WOO CHA” in meaning, pronunciation and market use. It highlighted the differences between the two in terms of target consumers, marketing methods and product offerings. Additionally, the plaintiff argued that “WOO” was a weak component commonly used in the industry. It further asserted that the disputed trademark had gained recognition through prior use and had been filed in good faith.

 

  Despite the plaintiff’s complaints, the IPC Court determined that “WOOTEA” and “WOO CHA” were highly similar. Both trademarks referenced “tea” and were used for similar food and beverage services. The court rejected the argument that “WOO” was a weak element, affirming the distinctiveness of the cited trademark. Regarding the subjective intent of the plaintiff, the court acknowledged that the disputed trademark, being a transliteration of its Chinese brand name “五桐號”, did not appear to have been filed with malicious intent to create confusion. However, the cited trademark was found to have been used and recognized prior to the disputed trademark’s registration.

 

  While the plaintiff presented evidence of the use of “WOOTEA” prior to registration, the court noted that its prominence was overshadowed by the dominance of the accompanying brand name “五桐號.” Furthermore, the court observed that the disputed trademark’s geographical scope was limited, its period of use was short, and its sales and market share data were insufficient. Owing to these factors, the opposed “WOOTEA” trademark failed to establish significant consumer recognition or distinguishability from the cited trademark.

 

  The court concluded that the similarities between the trademarks were likely to confuse consumers regarding the source of the services. As a result, the court upheld the decision to reject the registration of the disputed “WOOTEA” trademark in accordance with Taiwan’s Trademark Act.

 

  The above three cases demonstrate that the Taiwanese courts were consistent in their adoption of the first-to-file principle. The latter two cases both showed that the relevant consumers had a certain level of familiarity with the disputed trademarks “Ray gel” and “WOOTEA”. However, the IPC Court dismissed the evidence provided by the applicants, finding it insufficient to prove significant consumer recognition. This highlights the difficulties encountered by junior mark owners in proving domestic consumer familiarity with their trademarks. Even when junior mark owners can demonstrate greater recognition, Taiwan’s negation on the grounds of reverse confusion often leaves the later-filed applicant lacking the legal means to overturn the rejection of their registration. Since the first-to-file principle has become an unshakable doctrine, trademark applicants are encouraged to file applications as early as possible.

 

Fig. 1: Taiwan Trademark Application No. 107880075.

 

Fig. 2: Taiwan Trademark Registration No. 01068061 and No. 01895530.

 

Fig. 3: Taiwan Trademark Application No. 108025428.

 

Fig. 4: Taiwan Trademark Registration No. 1466381, No. 1977491 and No.1986640.

 

Fig. 5: Taiwan Trademark Registration No. 02098888.

 

Fig. 6: Taiwan Trademark Registration No. 02008961.