1.The trademark dilution theory is used to solve the problem of being unable to protect the distinctiveness of famous trademarks from infringement under the traditional theory of "likelihood of confusion". Therefore, if the markets of the goods or services for two trademarks are separate and their channels of trade do not significantly conflict, customers will not mistake them as from the same or related origins.

However, this is the problem that the trademark dilution theory addresses if granting the registration of the trademark at issue will cause harm to the distinctiveness or reputation of a famous trademark. Moreover, if someone’s trademark is identical with or similar to another person’s famous trademark or mark and applied for different goods or services, and the situation weakens the association between the famous trademark and the specific goods or services, causing the distinctiveness of the famous trademark to be diminished, it corresponds to Article 23 Paragraph 1 Subparagraph 12 regarding the likelihood of diluting the distinctiveness of a famous trademark or mark.

Even though the goods or services of the two trademarks at issue are not related, this does not affect the application of the aforementioned Article (referring to Supreme Administrative Court decisions No. 2013-Pan-374, No. 2012-Pan-47, and No. 2012-Pan-48). The plaintiff’s claim that so long as the goods are not related, dilution will not occur is mistaken.

2.Article 6 of the Administrative Procedure Act stipulates that “No differential treatment is permitted for administrative acts without a good cause.” The terms “principle of equality” in administrative law does not mean absolute and mechanical equality in form; it means that matters identical in nature should be treated and handled identically without being subject to differential treatment arbitrarily or for no proper justification. The legislator may rightfully give reasonably differential treatments of matters which are different in nature (referring to the Judicial Yuan Interpretation No. 596, and Supreme Administrative Court decision No. 2006-Pan-446). Whether to grant the registration of a trademark is considered on an ad hoc basis.

Regarding the legality and appropriateness of a specific trademark application, the defendant agency shall consider the fact and apply the law correctly, without being bound by other cases. The plaintiff alleges that there exist in practice a lot of the registrations that use “FreshDelight” as the trademarks or the part of the trademarks. Nevertheless, when the grounds for refusal of registration differ, the factors to be considered are also different. The reproductions and the dates of filing of the trademarks that the plaintiff alleged are distinct from those in this case. The ways those trademarks are used also differ.

In light of the principle of equality that the same thing is treated the same, and the different things are treated differently, the other cases cannot be cited as the grounds in favor of the plaintiff.

Trademark dilution, Famous mark, Principle of equality