Trademark Resources 2018-01-22T13:35:28+00:00

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IP Special

SLOGANS NOW REGISTRABLE (January 18, 2018)

Foreign applicants have long been puzzled by Taiwan’s rigid practice of rejecting slogans as registrable trademarks. Unlike other forms of marks, slogans have been treated differently. Under the Trademark Guidelines of Taiwan’s Intellectual Property Office (IPO), slogans, if not containing coined words, have been held descriptive or otherwise non-distinctive as a prima facie case, and require proof of secondary meaning (acquired distinctiveness) in order to overcome the non-distinctiveness citation. Such proof threshold, however, has seldom been successfully crossed. The Guidelines give no clear definition of a slogan or examples of registered slogans.

In one case that covered nutritional supplements, the IPO issued an office action alleging that the mark is a non-registrable slogan, pursuant to the Guidelines. In response to the office action, we avoided the secondary meaning approach, and argued that the rigid slogan rule deviates from the Trademark Law and international agreements, such as TRIPs, which do not undervalue slogans. We finally obtained a favorable IPO ruling.

Also, under an unpublished IPO understanding, the IPO is willing to accept and register non-descriptive slogans, considering the common use of slogans as trademarks in the real world, as well as consumers’ receptiveness. As long as the slogan is suggestive, or not descriptive in a sense, it may be registered. Though intended to be a general rule before the IPO amends the Guidelines, such understanding is not generally available to the public in a written form.

Nevertheless, an applicant that receives a slogan citation may wish to consider filing a response to take advantage of the IPO’s potentially lenient approach, by launching arguments against descriptiveness. The applicant may, of course, file evidence of secondary meaning if available. As stated above, that approach seldom works due to the absence of the required duration and volume of use. Evidence of secondary meaning acceptable to the IPO would in many cases, if not all, be tantamount to the level required of a well-known mark.

RESOLD DESSERTS CAUSE NO INFRINGEMENT (March 7, 2017)

Reselling of trademarked goods constitutes no infringement, said a Taiwanese District Court in one of its recent decisions.

The plaintiff, a dessert maker, sold desserts to general consumers online under its trademark, which appeared on shipping boxes.  The defendant, a customer, bought 92 items of the plaintiff’s desserts in April 2016 at reduced rates using bonus points he had collected. He then offered to sell such desserts online claiming genuine trademarked goods, at a price about 40-60% lower than the plaintiff’s regular prices.

Upon knowledge of such offer, the plaintiff immediately had his employee purchase some of the discounted desserts, which were delivered in the very shipping boxes bearing the plaintiff’s mark that the plaintiff used.  It then sued the defendant for trademark infringement, claiming damages in an amount equivalent to US$20,000.

Citing the exhaustion theory, the court held that once a trademark owner sells his trademarked goods, his trademark right is exhausted, thus barring him from claiming infringement against a person that re-sells such goods.

The exhaustion theory, generally known as the first sale doctrine in the United States, deals with a situation of re-selling trademarked goods.  Such goods sometimes refer to gray market, suggesting a questionable source or inferior quality.  The theory was first introduced into Taiwan’s Trademark Law in 1993 to expressly exempt such goods.  Before the amendment, courts had held different opinions on re-selling of such goods relying on different legal theories and fact scenarios.

THE NAME “JORDAN” HELD UNREGISTRABLE AS A TRADEMARK (December 12, 2016)

The PRC’s Supreme Court finally held the Chinese counterpart “喬丹” (pronounced as qiaodan by pingyin) of Michael Jordan’s name unregistrable as a trademark, per its December 8, 2016 decision.

The case dates back to 2000, when a PRC company started to register the Chinese name “喬丹” and its Chinese and English variations, leading to more than 100 registrations.  In 2012, Michael Jordan, the world-famous NBA basketball player, nicknamed Air Jordan, initiated unsuccessfully proceedings to cancel such registrations on the ground of infringement of his personal name.  The Trademark Commission and the lower courts vitiated such efforts holding that the registered marks were not sufficiently similar to Jordan’s name and that “Jordan” is a common English name.

The Supreme Court, however, held infringement of Jordan’s personal name, and ordered that the registration of the Chinese name “喬丹” be cancelled.  The Court reasoned that such name has a high-degree of publicity in China.  The cancellation ruling did not extend to the pingyin counterparts of the name, i.e., “qiaodan” or “QUAODAN”, however.

The judicial development seems to give a hope to foreign holders of trademarks or personal name marks that have been misappropriated in the PRC.  As a caveat, the decision should not be interpreted to mean a general protection of foreign personal names.  It appears that the Court is willing to extend protection to personal names of the exceedingly famous only.

CAN “CHANEL” BE REGISTERED AS A FIRM NAME? (August 8, 2016)

It is now possible in Taiwan to have a firm name deregistered if the name infringes on a trademark.  Taiwan passed a statute that would allow a court to issue a decision for deregistration of a firm name that infringes a registered trademark.  The statute, as part of the Commercial Registration Law (CRL), was promulgated in May 2016 and became effective immediately.

As a background note, commercial registration under the CRL is for non-corporate business entities, i.e., sole proprietorships and partnerships, and is within the power of local governments, i.e., cities and counties.  Despite the fact that the Trademark Law has authorized courts to eliminate trademark infringement generally, courts had traditionally deemed themselves having no power to order cancellation of a commercial registration, which is within the jurisdiction of local governments.  This had resulted in a number of commercial registrations of firm names infringing marks, some being famous international brands.

As to corporate entities, a 2012 amendment to the Company Law clearly allows a court to order removal of a corporate name that infringes on a trademark, under a penalty of compulsory dissolution for non-compliance.

To cure the lack-of-power problem and for enhanced trademark protection, the CRL was amended to add a provision authorizing courts to issue deregistration orders.  Upon receipt of the court order, the local government concerned would order the infringing name be changed to a non-infringing name.  If the required change is not timely made, the local government would then deregister the business entity concerned.

As a caveat, the court would not issue such a deregistration order if the plaintiff, the owner of an infringed mark, does not make a corresponding claim at the outset.  To avail itself of the remedy, the plaintiff is to target not just the goods or services that bear the trademark in question, but also to find out whether an infringing commercial registration of a firm name exists, and to claim deregistration, if applicable.

NEW TRADEMARK PRACTICE IN CHINA AND TAIWAN (October 20, 2015)

This is to update you on new trademark practice recently adopted in Taiwan and PRC, as follows:

  1. PRC: The PRC Trademark Office has recently adjusted the official fees pertaining to applications for trademark registration. The previous new application filing fee of RMB800 (app. US$127) per class has been lowered to RMB600 (app. US$95) for each class without more than 10 items of goods or services.  The additional filing fee for each exceeding item of goods or services has also been reduced to RMB60 (app. US$10) from RMB80 (app. US$13).  The new official fee amounts are effective from October 15, 2015.
  2. PRC: In contrast to the above good news, the PRC Trademark Office has also included a new, but non-statutory, ground for non-entertainment.  Specifically, if an applicant fails to amend or specify the goods or services to the satisfaction of the trademark examiner for a second time, the examiner may dismiss the application without merit.  The applicant may re-file the application without having to pay the filing fee, to resume de novo its filing process.  However, the re-filed application cannot claim priority from its initial filing.  There have been quite some cases that have been dismissed for such new ground.
  3. Taiwan: Trademark examination in Taiwan has taken much more time in the past three years.  It is not surprising that an allowance or final rejection is unavailable within two or three years. Many applications have been stuck because of lack of specification of goods or services to the satisfaction of the trademark examiner, although the same exact goods or services were previously acceptable.  Applicants need to review its policy or desirability of filing a multi-class application or a long list of goods or services, which may delay the prosecution easily.

Updates 2 and 3, above, show a tendency of requiring specification of goods or services.  However, a too elaborated list of goods or services is also not welcome, especially in the case of services. To avoid unnecessary delay, applicants may wish to consider if any common names of the goods or services are available for use.

IS “SANUKI” A REGISTRABLE TRADEMARK FOR NOODLES? (July 7, 2014)

Sanuki (讚歧), a city in Japan now called Kagawa, has a reputation for producing popular udon noodles, a type of Japanese noodles.  Sanuk’s udon is everywhere in Japan, identified by the Chinese-character name “讚歧”.  Taiwan’s Chinese books on travelling in Japan also give recommendations.

However, a known Taiwanese food company obtained four quick allowances for registration of the Chinese “讚歧” name and its Japanese counterparts, for use on udon and other food items, without being issued office actions.  That led to registration in March 1999.  The four marks were renewed in 2009, and licenses were recorded for two of them in 2007.

In 2008, the registrant sent a cease and desist letter to a Sanuki store in Taiwan, the first overseas licensee of Japan’s Sanuki brand.  The store changed its store name reluctantly and filed for invalidation of the four Sanuki registrations, causing quite some publicity.  In response, Taiwan’s IPO issued a news release, as an unusual matter, stating that the registrations were due to the examiner’s failure to find any bar to registration.  The registrations were finally cancelled as a result of 4-year long invalidation proceedings.

The initial allowances were granted about 15 years ago, when the Sanuki name was probably not as known in Taiwan as today.  Taiwan has a strict practice of barring trademark registration of a geographical name, even if the place is unknown for, or unrelated at all to, the goods for registration.  For example, Casablanca, the name of a Morocco city, was refused for registration on motorcycles.

It is clear that geographical names are not good candidates for trademark registration.  Unlike other grounds for invalidation, Taiwan’s trademark law sets no deadline for invalidating any trademark registration on the ground of including a misleading geographical name.

DOG FOOD v. HUMAN FOOD (May 20, 2013)

Like many other things, the role of dogs is undergoing a drastic change.  Dogs no longer watch the door or bark at a stranger.  They are served with delicious meals, and do not eat leftovers.  To some extent, they are members of modern families, and treated like humans.

Taiwan’s Intellectual Property Court (IP Court) issued this year a decision holding that dog food is similar to human food, for purposes of finding likelihood of confusion, over the view of the Intellectual Property Office (IPO) that these two items were dissimilar.  The following is a summary of the case.

  1. Opposition: A Taiwanese meat company (registrant) with some history and reputation decided to expand its meat items to dog/pet food and items and obtained a trademark registration for the new line.  An opposition was filed by a United States company in the business of nutritional supplements (opposer), claiming likelihood of confusion.  The opposer’s goods cited for opposition included nutritional supplements as well as food and beverage items.  As the marks of the parties were essentially the same, the case turned on the issue whether the goods of the conflicting marks are similar.  The case ended up at the IP Court.
  2. Traditional View: The IPO traditionally held that dog/pet food and nutritional supplements and food for human use were dissimilar.  The IPO, therefore, held no likelihood of confusion despite the similarity of the conflicting marks.
  3. IP Court’s Holdings: The IP Court overruled the IPO’s decision, stating that dog/pet food and human food are not dissimilar, in view of their close relationship in the present-day.  The court reasoned:  (a) Human purchasers:  Both products appeal to humans; pets do not have purchasing power.  (b) Manufacturer:  The registrant’s expansion of its product lines from meat products for human use to dog/pet food suggests the relatedness between the two.  (c) Sales channels:  Both are sold in hypermarkets.

Note:  The opposing company was represented by Himark Counselors.

TAIWAN’S NEW DESIGN LAW TO BE EFFECTIVE (September 1, 2012)

Taiwan’s new design law, incorporated as part of the Patent Law, will become effective January 1, 2013 pursuant to an August 22, 2012 decree from the Executive Yuan (Cabinet).  Designs are protected in Taiwan by design patents issued under the Patent Law.  As a result, the rules for invention patents have been adjusted for use in designs, such as specifications, claims, disclosure, prior art, annuities.

This update summarizes the substantive revisions of the design law, as follows:

  1. Modern Chinese Term of “Design”. The new law updates the Chinese term of “design”.  It has been hsin shih yang, meaning new design.  Now it is called sher chi, still meaning design but more commonly used today.  The word for “new” (hsin) is deleted.  The deletion is purely stylistic and never intended to waive the novelty requirement.
  2. Introducing the Term “Designer”. The “creator” of a design is now called a “designer”, who is generally the eligible applicant for a design patent.
  3. Design of Part of a Product. To allow protection of a design of a “part” of a product, the new law expressly provides that the design of “the whole or a part” of a product may be eligible subject matter.
  4. Computer Icons and GUI. The new law includes computer generated icons and graphic user interfaces (GUI) for design patent protection.
  5. Artistic Handicrafts. Artistic handicraft items as ineligible subject matter are removed.  As a result, the designers of such products may seek design patent protection.
  6. Derivative Designs. The concept of associated designs is replaced by derivative designs.

TAIWAN’S NEW TRADEMARK LAW TO BE EFFECTIVE (May 15, 2012)

Taiwan’s new Trademark Law, promulgated 2011, will become effective July 1, 2012.  The new law is quite an overhaul, incorporating many recommendations provided in the research report that Himark Counselors completed for the IPO in 2005.  Some substantive revisions were reported and analyzed in our previous issues of IP Special.

The effective date of the new law was announced by the Executive Yuan (Cabinet) in March 2012.  To implement certain amendments in the new law, the IPO has revised and made relevant guidelines, including the following, also effective July 1, 2012:

  1. Enforcement Rules of the Trademark Law. As its name indicates, these rules provide basic definitional and procedural aspects of the Trademark Law.  They have a higher hierarchy as a regulation than the following guidelines.
  2. Guidelines for Examination of Certification Marks, Collective Marks and Collective Trademarks. The revised guidelines set out matters for applications of these special marks, in response to the many revisions in the new law.
  3. Guidelines for Examination of Disclaimers. These guidelines are made for the revised disclaiming article in the new law.  The article requires the applicant to disclaim a non-distinctive component in a trademark where there is a likelihood of causing ambiguity as to the trademark’s scope of protection.   The guidelines detail the disclaiming mechanism under the revision.
  4. Illustrative Examples Exempt from Disclaiming. Pursuant to the guidelines, subparagraph 3 above, the Illustrative Examples provide some examples showing beyond doubt that the sample terms or symbols are non-distinctive, and are clearly not protected.  No disclaimer will be filed for these terms or symbols.  The examples include among others generic terms, words indicative of the quality, performance and other features, terms of self-laudatory descriptions (salutations like doctor, expert, master, etc.) and relevant terms for designing of goods or services.

REGISTRATION OF NON-CONVENTIONAL MARKS (October 25, 2011)

The new Trademark Law greatly expands the scope of protectable signs, to cover all non-conventional marks.  It includes the following salient points:

  1. Definition of Trademark. The new law for the first time introduces a definition of trademark.  Article 18 provides, “A trademark denotes to any distinctive sign and may be composed of words, figurative elements, symbols, colors, three-dimensional shapes, motions, holograms, sounds, etc. or their combinations.”
  2. Non-Conventional Marks. The key purpose of the amendment is to include by enumeration all non-conventional marks for registration.  Motion marks and hologram marks are specifically added.
  3. Distinctiveness. The new law requires that to be distinctive, a sign be recognized by the relevant consumers of the goods or services to indicate the source (emphasis added) of the goods or services and to be capable of distinguishing them from the goods or services or others.  The term “indicate the source” is used to clarify the vague term “identify” the goods or services, under the present law.  No new requirement is intended.
  4. Rule of Representation. To deal with the liberalization of non-conventional marks, the new law adds a rule regarding representation of the marks for purposes of filing.  A trademark drawing shall be represented in such a manner that it is clear, definite, complete, objective, durable and easy to understand.  The current rule of “visually perceptible representation” is deleted.  We understand that the Intellectual Property Office (IPO) is amending its guidelines to incorporate the new rules of representation.

The effective date of the new Trademark Law will be announced after finalization of the relevant guidelines, including the ones mentioned in subparagraph 4., above, by the IPO.  For a general discussion of the new Trademark Law, please see our update of October 1, 2011.

TAIWAN’S NEW TRADEMARK LAW (October 1, 2011)

The recently promulgated new Trademark Law is quite an overhaul, incorporating many recommendations provided in the research report that Himark Counselors completed for the IPO in 2005.  The substantive revisions include the following:

  1. Non-Conventional Marks. Registration is available to “any” form of distinctive signs.  Such liberalization is intended to cover all non-conventional marks, including motion marks, hologram marks.
  2. Filing / Registration. The new law includes some refinements as to the filing process and requirements.  Provisions for payment of the registration fee in two installments have been deleted.  Now an advance lump sum payment must be made before an allowed mark is registered.
  3. Trademark Use Defined. “Trademark use” is defined to mean the use of a trademark for a marketing purpose, covering use in various situations, including electronic platforms.  The definition is intended to apply both to non-use cancellation as well as infringement.
  4. Ownership / License. Co-ownership of a trademark is now covered.  Exclusive license is defined.  An exclusive licensee may have certain rights.
  5. Infringement. The infringer’s intent or negligence is not required for purposes of an injunctive relief, but is required for claiming damages.  The provision to claim harm to business reputation as a result of trademark infringement is deleted from the new law.  It becomes unclear whether such harm may be claimed under other laws, such as civil law.  Demonstrative use is specified as a type of fair use.
  6. Dilution. To prevail on a dilution claim, “likelihood” of dilution is sufficient. Actual dilution is not a requirement.

The effective date of the new Trademark Law will be announced by the Executive Yuan (Cabinet), after finalization of the relevant guidelines by the IPO.

Taiwan’s New Trademark Law (September 12, 2011)

The recently promulgated new Trademark Law includes many new provisions, incorporating many recommendations provided in the research report that Himark Counselors completed for the IPO in 2005.  The substantive revisions include the following:

  1. Registration is available to “any” form of distinctive signs. Such liberalization is intended to cover all non-conventional marks, including motion marks, hologram marks.
  2. “Trademark use” is defined to mean the use of a trademark for a marketing purpose, covering use in various situations, including electronic platform. It is intended that the definition will apply both to non-use cancellation as well as infringement.
  3. Co-ownership of a trademark is now covered.
  4. Provisions for payment of the registration fee in two installments have been deleted. Now an advance lump sum payment must be made before the mark is registered.
  5. Demonstrative use is specified as a type of fair use.
  6. Exclusive license is defined. An exclusive licensee may have certain rights.
  7. The infringer’s intent or negligence is not required in order for the trademark owner to seek an injunctive relief, but is required for claiming damages.
  8. The provision to claim harm to business reputation as a result of trademark infringement is deleted form the new law. It becomes unclear whether such harm may be claimed under other laws, such as civil law.
  9. To prevail on a dilution claim, “likelihood” of dilution is sufficient. Actual dilution is not a requirement.
  10. The new law also includes some refinements as to the filing process and requirements.

The effective date of the new Trademark Law will be announced by the Executive Yuan (Cabinet), after finalization of the relevant guidelines by the IPO.

MOVIE PROVES GOOD FAITH PRIOR USE (May 30, 2011)

Taiwan’s IP Court rendered a non-guilty decision, fresh from the oven, relying on a popular Hong Kong movie “God of Gamblers Returns” in holding the defendant’s prior use.  About 20 years ago, the defendant learned the skill of barbequing corn, heating corns in pebbles, from his master, who then licensed his SHIH TOU HSIANG mark (meaning stone village) to the defendant.  Upon return to his home town, he started a barbeque corn stand there.  The registration of the mark lapsed without renewal.  Afterwards, a third person acquired the registration of the mark, filing the application in 1997.  The defendant was prosecuted for counterfeiting.

The IP Court decision covers the following issues:

  1. Criminal Intent. The court found the criminal intent lacking, because the defendant thought that he was using his master’s mark under a license, without any intent to counterfeit the current registrant’s mark.  The court admitted an oral and unrecorded license agreement between the defendant and his master.
  2. Prior use defense. Under the Trademark Law, a third person’s good faith use prior to the filing of the application is a defense to infringement.  The subsequent trademark right based on registration does not extend to the prior use; the third person may continue the use of the mark to his goods or services.  The court recognized the validity of this defense in the present case.
  3. Movie as evidence. To prove prior use, the defendant produced testimony from a borough chief stating that he saw the defendant selling barbeque corn under the mark.  More dramatically, the defendant produced the above-mentioned movie, first shown in 1994, 3 years before the filing date.  One of the scenes was in the place where the defendant sold barbeque corn, and the defendant’s stand and trademark on a lantern were clearly shown in the movie.
  4. Geographic expansion. The defendant moved to his new business place after the filing date.  Would the immune prior use be extended to such place?  The court reviewed the legislative history, and held that the prior use defense is not limited to the initial geographical area.

CROSS-STRAIT TRADEMARK PRIORITY CLAIM (December 1, 2010)

Further to our previous reports on the favorable developments on cross-strait protection of intellectual property, under an potential agreement between Taiwan and PRC authorities, the agreement has been approved by both sides.  The agreement allows priority claims of trademark and patent applications filed in either side.

A priority claim is available to a corresponding Taiwanese trademark application covering the same trademark and list of goods or services.  To claim trademark priority in the PRC from such application initially filed in Taiwan, the applicant must claim and show the following:

  1. A written claim of the priority must be filed at the time of filing the PRC application. As a matter of practice, such written claim is included in a prescribed application form, to be used by a qualified claimant.
  2. The correspondent Taiwanese must be filed on or after September 12, 2010, the date when both sides signed the cross-strait agreement.
  3. The PRC application must be filed within six months from the qualified Taiwanese filing date (see 2, above).
  4. A certified priority document must be filed with the PRC trademark office within three months from the PRC filing date. The document must include a copy of the qualified correspondent Taiwanese application, certified by the Taiwanese Trademark Office, and specify the filing date and the serial number of the Taiwanese application.

CROSS-STRAIT INTELLECTUAL PROPERTY RIGHTS – an Unprecedented Breakthrough (August 5, 2010)

The signing of an intellectual property protection agreement between China and Taiwan on June 29, 2010 stands as a landmark in cross-strait relations. The pact, if ratified by both sides, will usher in increased protections in intellectual property rights, and the creation of an official cross-strait communications platform will encourage enforcement and cooperation. The agreement contains three major breakthroughs outlined below.

Most notably for R&D industries, the agreement recognizes the benefits of mutual priority. The right of priority in patent and trademark registration means that companies may use their Taiwanese filing date even if they have not yet applied in China (provided they do so within a specified time frame), and vice versa. The right of priority extends protection to the patent or trademark as it enters the foreign market and reduces the threat of infringement.

Another breakthrough involves the expansion of variety rights. In particular, the food and agricultural sectors will find increased trademark protection by allowing mutual recognition of new plant species for the benefit of plant breeders.

Finally, the pact’s mutuality provisions also address the problem of trademark hijacking, including geographic indications taken outside their original context. For example, the Alishan trademark was registered in China even though it references a Taiwanese place name. Under the new system, trademarks will have a mutual degree of registrability.

The implementation of the agreement will expand the scope of protection for intellectual property rights. The harmonization of the two systems will help to improve cross-strait relations.

CTMO NEW TRADEMARK FILING FORMALITIES (AMENDED) (August 4, 2010)

This notice is an update to our June 30, 2010 IP Special. In recognition of the difficulties faced by foreign entities, the China Trademark Office has partially reverted to the old guidelines. Although the CTMO’s exercise of these promulgations is yet unclear, to be safe we recommend a strict interpretation of the amended formalities, which would require that the applicant provide:

  1. An original signed Power of Attorney for each new application. The CTMO will not accept any applications unless an original signed POA is submitted at the time of initial application. If the applicant is a company, its seal must be affixed to the original POA. You may consider forwarding in advance to your associates signed or stamped blank forms (no notarization or legalization necessary), to deal in a timely basis with urgent matters.
  2. Both the English and Chinese names and detailed addresses of the applicant. Other languages will not be accepted.
  3. If the applicant is an individual, a copy of the applicant’s national identification card or passport.
  4. Nationality if the applicant is foreign.
  5. The description of the mark (including the meaning of words in foreign languages, minority languages, stylized forms, special fonts, 3D marks, and colored marks). If relevant, applicants may disclaim certain parts of the mark and provide any necessary clarifications.
  6. If claiming priority, the priority country, application date, and application number in the initial application.
  7. If filing an opposition or opposition grounds, a copy of an official document proving legal business standing (e.g., business license or Certificate of Incorporation). The CTMO generally does not accept Certificates of Good Standing. The correspondence address must match the official business documentation.

CTMO NEW TRADEMARK FILING FORMALITIES (June 30, 2010)

The China Trademark Office (“CTMO”) has issued new guidelines regarding trademark filing formalities to be effective July 1, 2010.  The new guidelines are manageable but slightly more onerous and require official documentation.  Among other changes, the CTMO now would require company seals to be affixed on all forms. You may consider forwarding in advance to your associates signed and sealed blank forms, to deal in a timely basis with any urgent matters.  Note also that priority claims that fail to provide complete information will be treated as if priority was not claimed.  The important changes require that the applicant provide:

  1. A copy of an official document proving legal business standing (e.g., business license or Certificate of Incorporation). The CTMO generally does not accept Certificates of Good Standing.
  2. Affixation of a company seal that matches the applicant’s name, even if using a trademark agent.
  3. Both the English and Chinese names of a foreign applicant. Other languages will not be accepted.
  4. A correspondence address that matches the official business documentation. Foreign applicants must use detailed English and Chinese addresses.
  5. Nationality if the applicant is foreign.
  6. The description of the mark (including the meaning of words in foreign languages, minority languages, stylized forms, special fonts, 3D marks, and colored marks). If relevant, applicants may disclaim certain parts of the mark and provide any necessary clarifications.
  7. If claiming priority, the priority country, application date, and application number in the initial application.
  8. In filing an opposition or opposition grounds, affixation of a company seal even if using a trademark agent. Any evidence submitted in a foreign language must be accompanied by a Chinese translation.

PROPOSED AMENDMENT TO TRADEMARK LAW – MONETARY RECOVERY MADE DIFFICULT (May 12, 2010)

The Trademark Law of Taiwan is being amended.  The bill is expected to be enacted into law.  One major impact would lie in the enhanced difficulties in seeking monetary recovery for trademark infringement.  The underlying rationale is that trademark infringement is a form of civil law tort, and should be controlled by the relevant provisions and theories in the Civil Code.  The proposed amendment is as follows:

  1. Statute of limitation: The statute of limitation for monetary recovery would be specified as two years, following the Civil Code rule.
  2. Pre-Established Damages Removed: The current law allows recovery based on pre-established damages, i.e., 500-1500 times of the retail price of the seized goods.  The proposal would eliminate the minimum of 500 times, but keep the ceiling of 1500 times.
  3. Burden of Proof on Plaintiff: The proposal would eliminate the current clause that eases plaintiff’s difficulties in proving damages.  For example, the burden of proving defendant’s expenses and costs, in computing defendant’s net profits, as a measurement of plaintiff’s damages, would be shifted to the plaintiff.
  4. Strictly Compensatory. A new limitation on recovery would be added requiring that recovery be “compensatory”.  Under the civil law theory, this would mean that the plaintiff must prove to the satisfaction of the court that it has actually suffered damages, and the recovery should be limited to compensating such damages.  The “compensatory” limitation would inevitably rule out recovery where the parties are not in direct competition or engage in the same services, e.g., gas stations, hotels, in different geographical areas.
  5. Loss of Goodwill Recovery Removed. The current provisions allowing recovery for loss of goodwill and publication of a winning court decision at the expense of defendant would be eliminated.  One of the rationales is that this is a matter of personality subject to the Civil Code.

HI-LIFE DILUTED – IP COURT DECISION (April 14, 2009)

Taiwan’s newly established Intellectual Property Court (“IP Court”) issued in December 2008 a decision holding that the HI-LIFE mark owned by a chained convenience store was diluted by Hielife for purposes of trademark registration, signaling added protection to well-known marks.  The decision, however, may be overreaching by characterizing likelihood of confusion as one type of dilution.

  1. Procedure: The diluting mark Hielife was initially registered by Taiwan’s Intellectual Property Office (“TIPO”), for use on electric home appliances.  The registration was subsequently cancelled by the TIPO following a petition for invalidation filed by the owner of the HI-LIFE mark for convenience store on the ground of dilution.  The case was finally appealed to the IP Court, which affirmed TIPO’s decision.
  2. Types of dilution: The IP Court classified likely dilution into three categories:  (1) likelihood of confusion; (2) weakening of distinctiveness when used on different goods or services; or (3) detriment to the goodwill or image when used on different goods or services.  The IP Court held dilution here based on types (2) and (3), and recognized the absence of type (1).
  3. Factors of fame: The HI-LIFE mark was held well-known because it had been widely and commonly known to the relevant businesses and consumers.  The court based its holding on the following factors:  20 years of history, a considerable number of chained stores all over the country, domestic and foreign registrations and sizeable advertisement expenses for various media.

The case is one of the very few cases where the court provides protection citing the dilution doctrine.  It shows the IP Court’s inclination to acknowledge and develop certain IP protection concepts, to live up to the expectation of the enterprises.  As reported in our previous update, the IP Court began to take cases since July 2008.  It has jurisdiction over criminal and civil litigations on intellectual property matters, primarily infringement cases, as well as appeals involving patent and trademark prosecution.  As of March 2009, it decided 157 trademark cases, 133 of those arising out of trademark prosecution.

PATENT UPDATE (October 31, 2008)

A number of significant measures have been implemented or announced in the past several months.  They will have substantial impact on patenting in Taiwan.

  1. IP Court: An Intellectual Property Court was set up and began to take cases from July 2008.  The court has exclusive jurisdiction over criminal and civil litigations on intellectual property matters, primarily infringement cases.  Appeals as to patent and trademark prosecution remain with the administrative court.  As of now, the IP Court has not rendered any decision on merit.
  2. Patent Bar: For the first time, Taiwan administered a patent bar examination in August 2008, pursuant to the Law for Patent Attorneys, effective as of January 2008.  Subject to certain grandfather clauses, the law will not allow any person that does not pass the patent bar to practice patent matters, e.g., filing patent applications, before Taiwan’s Intellectual Property Office (IPO).  The July examination, however, was considered a failure because of the exam questions were unreasonably unrealistic.  It is yet to be seen whether a make up examination will be given to remedy the problem.
  3. Patent Backlog: The backlog of pending patent applications reached a record high as of the end of 2007, although the filings were not much increased.  The IPO statistics show 120,661 applications on the wait list, a substantial increase from 93,058 applications in the preceding year.  The IPO has tried to shorten the average periods for the first actions.  In 2007, the first office action took 9.94 months in average for a design patent application and 3.98 months in average for a utility model application.  However, the first office action period for an invention patent application was not improved.  It is not surprising for an invention patent applicant to wait for more than two years before it receives the first office action.
  4. Outside Examiners: Outside patent examiners have posed serious concerns of professionalism, fairness, and confidentiality.  Upon its establishment in 1999, the IPO promised to eliminate entirely over five years outside examiners, representing about 85% of the examiners at that time.  As of April 2008, there were 268 in house examiners and 80 outside examiners.

NEW DILUTION GUIDELINES (April 7, 2008)

Taiwan issued its new guidelines for well-known marks in November 2007.  The guidelines, entitled the “Examination Guidelines for Protection of Well-Known Trademarks under Item 12, Paragraph I, Article 23 of the Trademark Law” (the “Guidelines”), set out the requirements of dilution, a registration bar added to the 2003 Trademark Law.  They replaced the former guidelines, which were essentially geared to protection under the likelihood of confusion theory.  The highlights are as follows:

  1. No likelihood of confusion: The Guidelines expressly state that the dilution statute is designed to remedy a situation where there is no likelihood of confusion, and should be used as an extraordinary exception.
  2. Blurring: A well-known mark is protected against likelihood of weakening of its distinctiveness, i.e., weakening or dispersion of its power to identify one single source, and making the mark an indication of two or more sources.
  3. Tarnishment: A well-known mark is protected against likelihood of detriment to its reputation, i.e., creating a disparaging or negative association to the consumers toward the quality or reputation represented by the mark.
  4. More fame required: To establish dilution, the mark must achieve a higher degree of fame than that required of a well-known mark for purposes of likelihood of confusion.  That is, the distinctiveness and reputation associated with the mark protected must be commonly known to a significant majority of the consumers at most areas in Taiwan.
  5. Closer similarity required: For purposes of dilution, the degree of similarity between the two marks in question must be higher than that required of a likelihood of confusion case.
  6. Extensively used words: According to the Guidelines, dilution is least likely if a word is extensively used as a mark for different goods or services, for example, “UNITED” and “FIRST”.
  7. Inherent strength: While the Guidelines apply to protection of the distinctiveness of a well-known mark, inherent or acquired, they state that dilution is more likely if the mark is of a higher degree of creativeness.