In a recent case, the Taipei District Court held that once a commodity barcode has been read through a computer, it is equivalent to a trade name. Further, given that commodity barcodes are symbols which are applied to articles and can serve as proof in business practice or a contract, they are deemed to be quasi-private documents.
According to Article 30-1(13) of the Trademark Act, trademarks containing another person's portrait or well-known name, stage name, pseudonym or alternative name should be refused registration unless said person consents to the application. However, the definition of 'stage names' in Article 30-1(13) remains unclear under current practice. The IP Court recently expressed its view on this issue in an administrative litigation regarding trademark opposition.
In the ever-changing fashion industry, every signature handbag design represents the designer's endeavour and the brand's goodwill. However, whether a handbag design is protected under the Copyright Act remains controversial. In recent civil decisions, the IP Court has demonstrated how the Taiwanese courts approach this issue.
As Chinese (Mandarin) is Taiwan's national language, many foreign companies use Chinese translations or transliterations of their foreign brands (trademarks) in order to expand into the Taiwanese market. However, as Chinese characters can have different pronunciations and meanings, there are often multiple ways of translating or transliterating foreign trademarks into Chinese. The Intellectual Property Court recently addressed this issue in an administrative case relating to a trademark opposition.
The Taipei District Court recently upheld the established case law on companies' use of competitors' trademarks in keyword advertising. In general, the courts deem the use of a trademark non-actionable if it does not appear in the actual ad (ie, someone using the search terms would not assume that the ad belongs to the trademark owner). However, even if a competitor's trademark is not used in a company's ad, its use in keyword advertising might be considered a violation of the Fair Trade Act.
In a recent administrative litigation case regarding a trademark opposition, the Supreme Administrative Court expressed an important view on the adoption of the anti-squatting clause. Compared with previous decisions, the court took a stricter approach to the interpretation of earlier trademark use. Claimants asserting unregistered rights under this clause must demonstrate that the unregistered earlier mark was used in the ordinary course of trade and in accordance with common transaction practices.
Under Article 97 of the Trademark Act, maliciously selling and importing counterfeits is subject to criminal liability. However, defendants are liable only if they act with malicious intent to sell and import counterfeits – where no malicious intent is proved or where it is shown that the defendant simply acted recklessly, they will not be held liable. A recent IP Court decision has clarified the evidentiary requirements for determining criminal liability where the counterfeiting involves non-traditional trademarks.
Under the Patent Act, utility model patents are examined using a formality examination system; the Taiwan Intellectual Property Office is not required to perform a substantive examination of patentability. However, as patent rights are granted without substantive examination, to prevent patentees from IP rights abuse, the Patent Act stipulates that when exercising a utility model patent, the patentee must not issue a warning without presenting a technical evaluation report.
Consumers will not usually perceive a slogan as an identifier of goods or services until they encounter consistent advertising or other practices by the brand user. Generally, therefore, slogans are not inherently distinctive in existing trademark examining practice in Taiwan. In a recent administrative case, an applicant claimed that because its house mark was extremely well-known worldwide, the Taiwan Intellectual Property Office should treat the trademark to be filed as a regular slogan.
Unauthorised trademarks and barcodes are often used on counterfeit products. However, it remains an issue as to whether the unauthorised use of a barcode violates any laws or regulations. Recently, the Supreme Court and IP Court, among others, have been reviewing the relevant issues and believe that unauthorised use of barcodes should constitute forgery under the Criminal Code.
The IP Court recently set a guideline in a criminal trademark infringement case determining jurisdiction over trademark infringement cases where the actual operator of an online store selling counterfeit goods is not physically located in Taiwan. The IP Court held that a district court in a certain city should have jurisdiction over trademark infringement cases when consumers who may have access to the online store are located in that city.
The IP Court adopted the reverse confusion doctrine in 2015 and granted registration for a trademark that was filed later than a similar senior trademark, but deemed to be more famous. The Supreme Administrative Court reversed the IP Court judgment and held that the first-to-file rule, as stipulated by the Trademark Act, should be consistently cited for protection of a registered senior trademark.
A revised regulation, effective from January 1 2017, stipulates that the recording of newly filed or renewed trademarks will be valid until the expiration date of the trademark registration. It is no longer necessary to renew a customs recordation each year, which will save money and increase anti-counterfeiting efficiency.
The IP Court recently held that gifts could be seen as trademark use in two non-use revocation administrative cases against VALENTINO trademarks. The IP Court pointed out that since the gifts were given to promote the VALENTINO-trademarked goods, such gifts were capable of being recognised by relevant consumers as a trademark and may therefore be accepted as trademark use. The IP Court's new opinions will affect the results of other similar cases involving trademark use.
According to the Trademark Act, any trademark which is contrary to public policy or accepted principles of morality will not be granted registration. In order to clarify the definition and scope of the terms 'contrary to public policy' and 'accepted principles of morality', the Taiwan Intellectual Property Office stipulated that the Examination Guidelines on Trademarks Contrary to Public Order or Good Morals should be used as the reference for reviewing relevant issues.
The Judicial Yuan and the IP Court recently held an IP forum. The forum discussed 12 proposed issues and reached a consensus on, among other things, damage claims against civil liabilities and whether the use of a registered trademark as a company name violates the Trademark Act. Although the consensus reached at the forum is not a precedent, public prosecutors and judges will consider it when examining specific issues.
According to the Trademark Act, any use of a trademark for the same or similar goods or services dated before the filing date of the registered trademark can be cited as defence of prior use in good faith and will not be subject to civil or criminal liability due to infringement of the registered mark. However, it is questionable whether use in foreign countries or areas outside Taiwan may also be cited as defence of prior use.
The Supreme Administrative Court recently upheld the IP Court's decision that the trademark STOPGAP should not be registered. The case was initiated by Gap (ITM) Inc against Huang Baicheng regarding the trademarks GAP and STOPGAP. Following an investigation, the STOPGAP registration was finally cancelled. The court held that the existence of trademarks similar to GAP may cause confusion due to the similarity between the words 'gap' and 'stopgap'.
The Supreme Administrative Court recently set a guideline to determine whether a registered trademark has become a generic term. The Trademark Act is silent on the issue of how to determine whether a trademark has become a generic mark or term and thus lost its distinctiveness as a trademark. The court pointed out that once a trademark has been registered, the criteria to determine whether it has lost its distinctiveness and become a generic term should be strict.
According to the Trademark Act, exclusive licensees can take legal action against trademark infringement. The act also stipulates that a licence cannot be cited against third parties unless it is duly registered in Taiwan. Due to the unclear definition of the legal effect of an unregistered licence under the act, whether the unregistered licensee really can file civil litigation or any other legal action against trademark infringement is controversial.
The IP Court recently took a market survey submitted by a trademark applicant into consideration when determining whether a three-dimensional (3D) trademark was distinctive enough for registration. After reviewing the credibility of market survey companies, survey methodology, the design of the questionnaires and the correlation between content and conclusion, the court held that the 3D trademark should be granted registration.
The Trademark Act stipulates that an exclusive licensee is entitled to exclude the proprietor and any third party from using its registered trademark and that an exclusive licensee is entitled to bring infringement proceedings in its own name. Whether the so-called 'sole licence' is an 'exclusive licence' is a controversial issue.
Although it is possible to promote products or services by using trademarks on television (TV) ads, companies are forbidden from sponsoring TV programmes and demonstrating their trademarks or trademarked products between the programming. However, alcohol products can sponsor TV programmes under certain restrictive conditions.
The Trademark Act can prevent other parties from using famous marks as trademarks in Taiwan. While famous trademarks can be protected only if the marks are famous in Taiwan, this does not mean that evidence to prove that the mark is famous in Taiwan must originate in Taiwan. In specific disputes supporting evidence from around the world may be used to determine the famous status of a mark in Taiwan.
In a 2013 administrative litigation judgment concerning trademark distinctiveness for a trademark registration application, the IP Court held that whether a trademark is descriptive of the designated goods is not immutable, but will vary with changes in social environment, consumer perception and status of actual use in the market.
Whether using a third party's registered trademark in keyword advertising constitutes trademark infringement remains a controversial issue around the world. In a recent case, the IP Court held that unauthorised use of a trademark in keyword advertising might violate the Fair Trade Act if the website operator has no connection with that particular mark but tries to use it to increase traffic to its own website.
'Sell-back' refers to the situation of the original equipment manufacturer, whereby products are manufactured and/or packaged in Taiwan but will not sold or circulated in Taiwan. Whether sell-back constitutes trademark infringement remains an unsettled issue. Some courts have stated that it does not constitute infringement against prior conflicting rights, while other courts have rendered judgments to the contrary.
The owner of a registered trademark is entitled to demand that a third party which infringes or is likely to infringe its trademark rights must cease or prevent such infringement. With respect to the right to claim damages, the Trademark Act explicitly restricts the time limit in which such legal proceedings may be brought. However, there is no time limit for injunctions against trademark infringement.
According to the Examination Guidelines on the Likelihood of Confusion, when evaluating whether two trademarks are likely to cause confusion the examiners in charge should, among other things, consider the strength of distinctiveness of the trademarks. With respect to circumstances of actual confusion, the party concerned may present a market survey as supporting evidence.
According to the Code of Criminal Procedure, if in criminal proceedings the court finds the defendant not guilty, then the court should transfer the civil action to the civil division of a court for trial. However, according to the IP Case Adjudication Act, when a defendant is found not guilty, the civil claim should be directly rejected without transferring it to the civil division of the court.
When a foreign legal person initiates a proceeding in Taiwan, fundamental questions of law often arise. How should the representative of the foreign legal person and the scope of such representation be defined? Who has the right to initiate proceedings or exercise power of attorney? In a recent trademark opposition case, the IP Court has given its view.
Whether a branch office can be the applicant of a trademark application is an important issue for foreign companies. Under current practice, the Taiwan Intellectual Property Office holds that unless a branch company has an independent legal personality under the laws of the country where such branch office is established, the relevant trademark applications can be filed only under the name of its head office.
In a recent criminal case, after referring to a 1978 Supreme Court judgment, the Taipei District Court ruled that the 'act of sale' did not have to include both the purchase of goods and the resale of such goods. It held that where a party merely purchases counterfeit trademark goods for profit-making purposes but does not resell them, this can be deemed to be an act of sale which is subject to punishment under the Trademark Act.
It is common practice for electronic map manufacturers to use businesses' trademarks to indicate their location on Global Positioning System maps. However, the question of whether such use – where the consent of the trademark owner has not been obtained – is deemed to infringe the relevant trademark remains controversial. The Intellectual Proprty Office recently clarified the issue.
Trademark owners usually arrange for their licensed manufacturers to destroy defective goods in order to control the quality of their merchandise and protect their reputation. However, it is not uncommon for such goods to make their way onto the marketplace. The courts have been divided over the issue of whether the sale of such defective merchandise violates the Trademark Act.