Can Trademarks Share the Same Name? Taiwan Trademark Rules

Recently, “Bull Head Brand” (牛頭牌) slippers went viral on Threads in Taiwan, leading many people to discover that, in addition to the familiar Bull Head Brand barbecue sauce, there is also a footwear brand using the same Chinese brand name.

One sells food products, while the other sells footwear. Both use “牛頭牌” as their brand name, and both have obtained trademark registrations.

This naturally raises a question: If someone has already registered a trademark, how can another business still use and register the same name?

The answer lies in the scope of trademark protection.

Trademark rights do not give one party exclusive control over a particular name across every industry. The scope of protection must be considered together with the designated goods or services covered by the registration.
 

Why Can the Same Trademark Name Coexist in Different Classes?

When applying for trademark registration, an applicant must not only submit the brand name or logo but also specify the goods or services for which the trademark will be used.

Under Article 35 of Taiwan’s Trademark Act, the proprietor of a registered trademark has the exclusive right to use the trademark in relation to its designated goods or services.

In principle, using an identical trademark for identical goods or services requires the consent of the trademark proprietor. Where an identical trademark is used for similar goods or services, or a similar trademark is used for identical or similar goods or services, the key question is whether there is a likelihood of confusion among relevant consumers.

Therefore, identical names may still coexist and obtain separate trademark registrations when they are used for clearly different goods or services and consumers are unlikely to believe that the businesses come from the same source or have a licensing, franchise, affiliate, or other commercial relationship.

However, being in different classes does not automatically mean there is no conflict.

Taiwan follows the international Nice Classification system, which consists of 45 classes: Classes 1–34 cover goods, while Classes 35–45 cover services.

Nevertheless, under Article 19 of the Trademark Act, the determination of whether goods or services are similar is not restricted by their classification. In practice, factors such as function, purpose, customary trade practices, and actual market conditions must also be considered.

For example, coffee beans, retail services relating to coffee, and café services may fall within different classes, yet they may still have a certain degree of commercial relationship. Conversely, two products classified within the same class are not necessarily considered similar.

This is why a trademark search should never focus solely on the brand name or class number. The relationship between the relevant goods and services—and whether consumers may believe that two brands originate from the same source—must also be evaluated.
 

Does Filing in All 45 Classes Guarantee Protection? The Risk of Three-Year Non-Use Revocation

Some businesses consider registering their trademark in all 45 classes to prevent others from securing the same brand name.

They may assume that once all classes are covered, they can permanently reserve the name.

However, the trademark system is designed to protect brands that are genuinely used in commerce—not to allow trademark owners to indefinitely stockpile names.

Under Article 63, Paragraph 1, Subparagraph 2 of Taiwan’s Trademark Act, a trademark registration may be revoked ex officio or upon application by another party if, without legitimate reasons, the trademark has not yet been put to use or its use has been continuously suspended for three years.

In Chinese-speaking trademark practice, this procedure is sometimes informally referred to as “撤三.” Under Taiwan’s Trademark Act, however, the proper legal concept is revocation based on non-use or continuous suspension of use for three years.

Therefore, even if a business initially registers its trademark across all 45 classes, registrations covering designated goods or services for which the trademark is not genuinely used may still become vulnerable to revocation.
 

Unused Goods or Services May Also Be Partially Revoked

A trademark registration within a single class may cover multiple designated goods or services.

Obtaining registration does not mean that every item listed in that registration will necessarily remain protected indefinitely.

Under Article 63 of the Trademark Act, where grounds for revocation exist only in respect of some of the designated goods or services, the registration may be revoked only in respect of those goods or services.

For example, a brand may designate several products within the same class but actually market only some of them.

If another party subsequently files for revocation based on three-year non-use, the unused goods may become subject to revocation, while protection for goods supported by genuine evidence of use may remain in force.

Therefore, filing for as many goods, services, or classes as possible is not necessarily the safest trademark strategy.

A more sustainable approach is to plan trademark coverage according to the brand’s current operations and its reasonably foreseeable business development.
 

Who Must Prove Trademark Use in a Non-Use Revocation Case?

Once the trademark proprietor receives a notice from the Taiwan Intellectual Property Office (TIPO) to submit a defense in a revocation proceeding, the proprietor should actively provide evidence demonstrating genuine use of the registered trademark.

Evidence of use may include photographs of goods, packaging, containers, contracts, shipping documents, invoices, receipts, advertisements, catalogs, posters, photographs of business premises, and other commercial records.

Ideally, the evidence should clearly establish the trademark used, date of use, identity of the user, and the goods or services actually marketed under the trademark.

Website pages and social media posts may also serve as evidence, depending on whether they reflect genuine commercial use consistent with customary trade practices. Combining such materials with product photographs, purchase orders, invoices, shipping records, or other transaction documents generally creates a more complete evidentiary record.

Trademark owners should also be aware of the three-month rule.

If the proprietor or licensee begins using the registered trademark within the three months before an application for revocation is filed because they have learned that another party intends to seek revocation, such temporary use cannot necessarily be relied upon to avoid revocation.

Brands should therefore preserve evidence of trademark use as part of their ordinary business operations rather than waiting until a revocation notice arrives.
 

Can Someone Use a Well-Known Trademark If It Is Not Registered in That Class?

Ordinary trademarks are generally protected primarily in relation to identical or similar goods and services. Well-known trademarks, however, may receive broader protection that extends beyond individual classes.

Under Article 30, Paragraph 1, Subparagraph 11 of Taiwan’s Trademark Act, an application may be refused where the applied-for trademark is identical with or similar to another person’s well-known trademark or mark and is likely to cause confusion among the relevant public, or is likely to dilute the distinctiveness or reputation of the well-known trademark.

As a result, applying for a trademark in a different class does not necessarily eliminate the risk of refusal.

TIPO’s Examination Guidelines for the Protection of Well-known Trademarks under Subparagraph 11 of Paragraph 1 of Article 30 of the Trademark Act also make clear that registration in Taiwan is not a prerequisite for a trademark to qualify for protection as a well-known trademark.

In other words, an unregistered trademark that satisfies the requirements for well-known status may still prevent another party from registering an identical or similar trademark.

Actual use of another party’s mark raises a related but distinct issue.

Article 70 of the Trademark Act provides protection for well-known registered trademarks in certain circumstances. Where a person knowingly uses a trademark identical with or similar to another person’s well-known registered trademark and such use is likely to dilute the distinctiveness or reputation of that well-known trademark, the conduct may be deemed trademark infringement even where different goods or services are involved.

However, a brand does not become a well-known trademark simply because its owner claims that it is famous.

Where protection against trademark dilution is sought across substantially different goods or services, a higher degree of recognition among the general public may be required.

Therefore, the fact that a well-known trademark is not registered in a particular class does not automatically mean that another party is free to use or register it.

The result depends on factors including the degree of recognition of the trademark, the degree of similarity between the marks, the likelihood of confusion, and the risk of dilution.
 

Trademark Protection Is About More Than a Name—or the Number of Classes

Whether identical trademark names can coexist depends on more than whether the names themselves are the same.

The relationship between the relevant goods and services, actual market conditions, and the likelihood of consumer confusion all play an important role.

Before filing a trademark application, businesses should conduct comprehensive searches for identical and similar trademarks and select classes based on their actual operations and reasonable business development plans.

After registration, trademarks should also be properly and continuously used, with evidence of use preserved as part of routine brand management.

Trademark protection is not a one-time task completed upon registration. From the original scope of the application to subsequent use and evidence management, every stage can affect whether a business is ultimately able to maintain and enforce its trademark rights.

If you have questions about trademark class planning, trademark similarity searches, three-year non-use revocation, or protection of well-known trademarks in Taiwan, please contact Goldkeen International Property Office.
 

References

• NOWnews: Are Bull Head Brand Slippers and Barbecue Sauce Made by the Same Company?

• Taiwan Intellectual Property Office (TIPO): Trademark Act

• TIPO: How Are Identical or Similar Designated Goods/Services Determined?

• TIPO: Grounds for Applying for Revocation of Trademark Registration

• TIPO: Examination Guidelines for the Protection of Well-known Trademarks under Subparagraph 11 of Paragraph 1 of Article 30 of the Trademark Act