Trademark News Letter
issued in March 2023
No.1 |
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Tips for Trademark in Taiwan |
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To expedite obtaining your trademark registration by the “Fast-Track” system |
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If using the standard identification issued by TIPO is acceptable, the new trademark application may be accelerated for 1.5 months to be examined. Thus, we suggest that foreign applicants identified their goods or service on the standard identification list issued by TIPO as possible.
Foreign applicants usually provide English identifications which are needed to be translated into Chinese when filing. If the meaning of standard Chinese identification can sufficiently cover the original English identification, the applicant may request its Taiwan trademark agent to translate it as the same. Thus, the new trademark application may enjoy early examination.
However, if the new application would claim priority, it is necessary to ensure the Chinese standard identification translation does not exceed the meaning scope of the English original identification.
TIPO’s “Fast-Track Trademark Examination Program” was fully implemented on May 1, 2021. Filing a “Fast Track” application is not necessary to pay additional fees but only needs to comply with 5 requirements as follows:
- All identifications are chosen from the standard identifications listed in the e-filing system
- Filing the new trademark application by TIPO’s e-filing system
- Paying the government fees through certain electronic ways when filing
- Submitting POA simultaneously when filing
- Only traditional plane trademark device is adaptable.
Thus, if the standard identifications are acceptable to the applicant, the applicant may have the opportunity to obtain the trademark registration by 1.5 months early.
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Latest Trademark Practice Insights
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The marketing behavior among the same group of companies
cannot be deemed as trademark use |
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The IP Court issued a decision holding that the product manufacturing behavior based on the division of labor within the same group of companies, does not market goods bearing the trademark so that relevant consumers would not recognize the products come from the trademark owner. Therefore, the procurement behavior among affiliated companies is difficult to be recognized as trademark use. The proposed mark should be revoked due to non-use.
This holding was also confirmed by the Supreme Administrative Court in this case in 2022(110 shang 491).
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Ching-I Lu's comment
Nowadays, many enterprises may split different businesses and set up multiple subsidiaries. Then the subsidiaries will divide the work and cooperate to complete the goods or services.
If the goods or services are never noticed by consumers outside the group, but only purchased by each other for the division of labor, according to the opinion of the Supreme Administrative Court in this case, it will be considered not to be a trademark use. Thus, the trademark right may be revoked accordingly. Enterprises should pay high attention to this situation.
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It seems to constitute an abuse of rights when claiming infringement against the licensee after the maliciously squatting trademark |
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The Supreme Court (111 tashang 16) held in 2022 that this trademark infringement lawsuit violates the principle of good faith and constitutes an abuse of rights, which is an important defense method. The IP court ignored this and did not explain the reasons why it was not taken. This decision issued by the IP court thus violated the stipulation.
That’s because the IP court has determined the fact that the plaintiff had been aware of the original trademark manufacturer’s mark but still applied the disputed similar mark maliciously. And the defendant is the licensee of this original trademark manufacturer.
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Ching-I Lu's comment
This case is quite controversial.
The IP court determined that the plaintiff’s disputed trademark was maliciously squatted based on a distribution relationship with a foreign manufacturer several years ago. However, when the plaintiff filed this infringement lawsuit, the disputed trademark exceeded five years invalidation deadline to cancel. Since the defendant could not prove that the foreign original manufacturer's trademark was well-known, it is impossible to claim that the plaintiff's trademark should be invalided in this lawsuit.
Actually, if the case is still within the five-year invalidation period, the plaintiff’s disputed trademark may be invalided due to a violation of Article 30-1-12 of the Trademark Act. In such a situation, the contention of this case arises spontaneously.
Can a trademark that has been identified as malicious squatted still claim trademark infringement against the legal licensee of the original manufacturer?
Theoretically, although it is a malicious squatting registration, the disputed trademark exists effectively because the five-year invalidation period has passed and there is no legal basis for canceling it. Even if the original manufacturer itself comes to Taiwan to use it, it can constitute a trademark infringement. No mention that the defendant, in this case, is only the licensee of the original manufacturer.
However, is it reasonable to allow a malicious squatting trademark owner to claim trademark infringement against legitimate licensees? The Supreme Court obviously disagrees with this. So in the judgment of this case, it pointed out this issue.
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The compensation is determined based on the total price calculated per legal fiction rather than the actual sales
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The Supreme Court (111 tashang 2081) held in 2022 that the "total price" stipulated in Article 71-1-3 of the Trademark Act refers to the total price counted by the price and number of counterfeits, not the total price of the defendant's actual sales. Therefore, there is no need to distinguish between sold and unsold. The compensation amount should be calculated by " The" retail price of counterfeits” multiplied by the “total quantity seized”.
In addition, in response to the defendant's defense that the number of counterfeits presented as a promotional gift should be deducted. The Supreme Court obviously agreed with the IP Court’s opinion: this part of the quantity is still "seized counterfeits" and does not need to be deducted.
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Ching-I Lu's comment
The Article 71-1-3 of the Taiwan Trademark Act stipulated that”
Damages demanded by the trademark owner may be calculated according to any of the following:….
(3) the amount not more than 1,500 times the unit retail price of the counterfeits; if over 1,500 pieces of counterfeits were found, the number of damages shall be a lump sum of the market value of the counterfeits;…”
Thus, if the amount of counterfeits is less than 1500 pieces, the compensation will be certain times (less than 1500) the unit retail price. If it exceeds 1500 pieces, the compensation will be the lump sum of the market value of counterfeits. However, “the market value” should be calculated by " The retail price of counterfeits” multiplied by the “total quantity seized” rather than the defendant's actual sales, according to the opinion of the Supreme Court in this case.
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The Principal Attorney of this firm, Ching-I Lu, will attend INTA annual meeting in Singapore in May this year. Since the outbreak of the pandemic, there were three years of obstacles to the important trademark event. We expect to meet again old friends worldwide at this INTA meeting. Any new friends are also welcome to meet and please do not hesitate to contact us.
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Before establishing this firm in 2022, Ching-I Lu practiced in the Trademark Department of a leading law firm, which is also top three firms in Taiwan, for more than 15 years.
She specializes in trademark matters, including litigation and prosecution. Ching-I Lu ever represented many leading companies in the world to retrieve their famous trademarks in Taiwan.
Ching-I Lu was invited to be the first Secretary-General of the Taiwan Trademark Association from 2020 to 2022
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Contact Email : info@avail.com.tw |
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