“CIF v. CJF”

• 1. According to Art. 30(1) para. 12 of the Trademark Act grounds for refusal of registration of a trademark are: 1. trademarks that are identical or similar to those used by others previously; 2. trademarks that are used on the same or similar goods or services; 3. the applicant is aware of the existence of the trademark of another because it has contractual, regional or business connections or any other relationship with the proprietor; 4. applying for registration without the consent of others.

• 2. In accordance with the initial application doctrine, the initial applicant is given priority protection; however, based on the principle of good faith and the relationship between prevention of consumer confusion and unfair competition, an agent or representative is prohibited from initially registering a trademark and expanding the scope of application and the circumstances of contractual, regional or business connections or any other relationship, knowing the existence of another’s trademark and thereby plagiarising or engaging in trademark theft.

• 3. The so-called initial trademark use is mainly used to confirm that the disputed trademark had been in continuous use prior to the application for its registration; therefore, it is sufficient to only be an initial trademark use relative to the disputed trademark, regardless of initial use domestically or overseas and regardless of whether it is registered or not.

• 4. Where there is no business relationship but there is knowledge of the existence of a trademark prior to its use by others due to a relationship between related or competing peers, this relationship shall count, under Art. 30(1) para. 12 of the Trademark Act, as “any other relationship”.