Can your trademark get Expedited Examination?😇 Find the tips.
 
Trademark News Letter
 
No.2            issued in June 2023
 
Avail International Trademark
Attorney at Law
 
Ching-I Lu
attorney at law
Tips for Trademark in Taiwan

New Amendment Trademark Act Pass the Trademark Expedited Examination

The Legislative Yuan passed the draft amendment of the Trademark Act on May 9, 2023, which was announced by the President on May 24. The implementation date is yet to be determined by the Executive Yuan.

 

The content of this revision includes the addition of a Trademark Expedited Examination for trademark registration applications, the establishment of management for trademark agents and the protection of the working interests of existing trademark practitioners, the simplification of the procedures for trademark owners to be notified by the customs for infringement determination, the addition of qualified applicants, and the fair use for using other's trademarks in specific circumstances. Especially, the Trademark Expedited Examination will be helpful to resolve the suspense of infringement disputes in the market.

 

In the past, trademark applicants often faced the dilemma of not knowing whether to continue to use the applied trademark after receiving the warning letter. Whether the device of the applied trademark is similar to the prior registered trademark needs to be judged by the professional authority. However, the trademark application procedure takes eight months from filing to approval according to the timetable announced by TIPO.

 

Applicants sometimes have to market their products before trademark approval. Once it goes on the market, the applicants will receive a warning letter asking them to stop using the applied trademark. When the trademark design and the goods/services are not exactly the same, it is sometimes difficult to judge whether it is similar to the prior registered trademark. However, when the applicant has invested a large amount of money to launch the product, should the product be removed from the market? If not, he may be sued for trademark infringement and face the risk of criminal prosecution; If yes, whether it constitutes trademark infringement is still undecided, is it necessary to take it off the shelves and increase losses?

 

The revision of the Trademark Act has added the Trademark Expedited Examination, and the applicant will be able to request for an accelerated examination at a fee. If TIPO approves the registration soon, the applicant’s trademark right can be confirmed. It also means that TIPO has determined that the applied trademark is not similar to the prior trademark. Thus, the infringement dispute can be initially resolved.

 

Although there may be opposition by the prior trademark owner, the applicant can basically claim the enforcement of legitimate rights before his trademark is canceled unless there is malicious intent. It is believed that the formulation of the Trademark Expedited Examination will be helpful to companies in marketing their products.

Latest Trademark Practice Insights

The Grand Chamber of the Supreme Administrative Court ruled that famous trademarks that are subject to dilution requirements do not need to be widely known to ordinary consumers

The Grand Chamber of the Supreme Administrative Court ruled in March 2023 that famous trademarks that are subject to dilution requirements do not need to be widely known to ordinary consumers.

 

When examining whether there is a risk of dilution for a well-known trademark, it should give consideration to the degree of the famous, the degree of similarity of the trademark, and the extent to which the trademark is widely used for other goods/services, the degree of inherent or acquired distinctiveness for famous trademark and other considerations, such as whether the owner of the disputed trademark has the intention to make people associate its trademark with the famous trademark.

 

With regard to the dilution protection of famous trademarks, the requirements for “the degree of famous trademarks” are higher than those for confusion protection. It should be determined in the requirement “the risk of dilution” rather than the requirement “well-known trademark.”

Ching-I Lu's comment

  1. With regard to dilution protection, how degree should a well-known trademark has? There have been endless debates since the Trademark Law added dilution protection in 2003.
  2. The Supreme Administrative Court's First Joint Meeting held in November 2005 that only the mark widely known to ordinary consumers can be adapted the dilution protection. Thus, if the mark is only known to relevant consumers, dilution protection can not be adopted. Since then, most judgments in practice have taken this resolution as the standard for determination. The decision ruled by this Grand Chamber reversed this holding.
  3. However, is the Grand Chamber relaxing requirement of the dilution protection? Whether as long as it reaches a well-known trademark known to the relevant consumers, dilution protection can always be applied.

Not exactly.

The ruling of the Grand Court this time only shifted the consideration of “the degree of famous trademarks” from the requirement of “well-known trademark" to which “the risk of dilution”.

 

Even if a mark fulfills the requirement “well-known trademark", which is known to relevant consumers is sufficient, it is not sure whether it can meet the second requirement of " the risk of dilution ".

 

Because the connotation of " the risk of dilution " also includes the need to consider: the degree of famous trademarks, the degree of similarity of trademarks, the extent to which trademarks are widely used for other goods/services, and the degree of inherent or acquired distinctiveness and other factors such as whether the disputed trademark owner has the intention to make people associate his trademark with the famous trademark.

 

Thus, the case involved in the ruling, after the ruling of the Grand Chamber, the Supreme Administrative Court's 110-Year Shang Zi No. 138 judgment is not directly affirming that the case constitutes a risk of diluting the famous trademark's recognition or reputation. On the contrary, the result of the case is still a "rejection of the appeal", and the final result of the judgment still does not constitute the dilution.

Goods imported into Taiwan from legally registered trademark holders in Japan are not exactly genuine parallel imported goods

The Supreme Court recently reversed a decision issued by IP Court based on it did not consider the appellant’s important arguments. The case involved the appellee(defendant) taking pictures of the goods brought back from Japan in packaging bags with the words "NEFFUL”, and then uploading the pictures to his Shopee shopping platform for display and sale.

 

The appellant claimed that in addition to the disputed designed trademark, the pure word mark "NEFFUL" is also registered in Taiwan, which is exactly the same as the six English letters of "NEFFUL" that appear on the package of the goods in dispute by the appellee.

 

The original judgment issued by IP Court disregarded this, but only based on the grounds that the appellee did not infringe the disputed designed trademark, which was unprepared and illegal for its own reasons.

Ching-I Lu's comment

  1. In this case, the first thing to be identified is whether the product sold by the appellee(defendant) is really a parallel imported good.

 

If the goods belong to parallel imports and are resold in original packaging, the trademark on the product body is not infringing at all.

 

If the goods sold by the defendant are not parallel-imported goods, based on territorialism, NEFFUL’s Taiwan trademark right belongs to the Taiwan trademark owner. Even if the defendant’s importer has the legal trademark right to register the NEFFUL trademark in Japan, it still infringes Taiwan’s NEFFUL trademark rights.

 

  1. The rest is the judgment of whether the two designs are similar, and whether there is a risk of confusing consumers. After comparison, the IP Court of this case believed that the defendant's usage pattern was not similar to the overall design pattern of Registration No. 0171681, so it believed that there was no risk of confusion, and it did not constitute infringement.

 

  1. The reason why the Supreme Court reversed the original judgment, in this case, was that the plaintiff had proposed other undesigned NEFFUL pure word trademark lists, which were completely the same as the six English letters of "NEFFUL" that appeared on the package of the goods in dispute by the appellee. It may cause confusion and mislead consumers.

It cannot be determined to be a trademark infringement just because counterfeits of Taiwan trademarks are shown on the Alibaba website
The IP Court issued a criminal decision recently. Trademark rights are based on the principle of territorialism and are deeply regional.  The trademark judgment adopts territorialism, and Taiwan’s trademark law should take the Taiwan, Penghu, Jinma, and Jinma regions, which are currently governed by the Republic of China, as its application field.

 

The beef jerky marked with "KOW KUN" and " KOW KUN &design” on the packaging bag, in this case, was produced by the defendant in Mainland China and put on "Alibaba" and "Taobao" websites established in Mainland China. The beef jerky that the defendant sold on the "Alibaba" and "Taobao" websites had no way of being imported into Taiwan due to importation prohibition.

 

Therefore, the defendant's sale of beef jerky on the websites of "Alibaba" and "Taobao" is obviously not for the purpose of marketing in the Taiwan market. The prosecutor's appeal still insisted that the defendant's intention was obviously marketing to the Taiwan market, which is unacceptable.

Ching-I Lu's comment

  1. The case involved counterfeits, infringed Taiwan trademark and sold by the defendant, which was produced in Mainland China and put on "Alibaba" and "Taobao" websites established in Mainland China.
  2. The issue, in this case, is that the defendant's products are sold through websites such as "Alibaba" and "Taobao", which can be purchased by Taiwanese consumers and the goods can be shipped to Taiwan. Additionally, the website shows many traditional Chinese characters and can be paid in Taiwan dollars. Therefore, the prosecutor believes that the defendant intends to market in Taiwan, and Article 95 of the Trademark Law should apply.
  3. Regarding the use of trademarks on the Internet, Trademarks Use Precautions issued by TIPO does stipulate: "If the first-level URL of the webpage using the registered trademark is a ".tw" Chinese URL, in principle, it can be considered that the user has the purpose of marketing in the Taiwan market. For example, the webpage displays the registered trademark and sells the goods indicated by the registered trademark, and provides delivery services for consumers in Taiwan, or the page provides options in traditional Chinese, etc.”
  4. Therefore, in practice, in a trademark revocation case, if the trademark owner can submit the receipts, invoices, and product catalogs on the shopping network that Taiwanese consumers ordered from the trademark owner through the Internet, it can prove that domestic consumers have purchased goods through the Internet. So that the mark will not be revoked.
  5. However, the " Trademarks Use Precautions", according to its "Preface", is: "In order to remind and guide trademark owners to use registered trademarks correctly and legally, so as to effectively maintain trademark rights, these precautions are formulated." Obviously, the "Trademarks Use Precautions " is mainly to regulate the situation of "maintain trademark use", rather than the "infringement use". Then, if the above situation happened in an infringement case, can it also constitute "infringement use"?
  6. Actually, the facts of this criminal case are not the same as those mentioned in the "Trademark Use Precautions" above. Because according to the purchase receipt of the defendant products, both the mailing address of the sale and the receiving address on the receipt are in Mainland China.
  7. Assuming that the product, in this case, is ordered by Taiwanese consumers from Taiwan and shipped to Taiwan, should there be a different conclusion?

Coincidentally, recently in another case 111 Minshang Suzi No. 32, the defendant company preemptively registered the plaintiff's "ć›șæ»żćŸ·" trademark in Mainland China without the plaintiff's consent and then set up an official website to promote. The motorcycle magazine published in Taiwan offered to sell the "ć›șæ»żćŸ·" tires to consumers in traditional Chinese characters. The place of action and the place of damage were both in Taiwan. The court in this case concluded that the defendant constituted a trademark infringement.
NEWS ABOUT THIS FIRM

The International Trademark Association Annual Meeting (INTA) is a grand meeting for all trademark practitioners, with over 8,000 to 10,000 participants yearly. This year INTA was held in Singapore on May 16, 2023.

 

I have participated in this event every year since 2014 INTA in Hong Kong, San Diego in 2015, Orlando in 2016, Barcelona in 2017, Seattle in 2018, and Boston in 2019. It has been stagnant for three years since the outbreak of the epidemic at the end of 2019.

 

It was the first time I participated in the INTA Annual Meeting after the epidemic and the first time I participated in the INTA Annual Meeting since my new firm was established last year, which is of great significance.

 

Although the schedule of participating in the Annual Meeting has not changed much from the past, which included countless meetings and receptions with trademark attorneys from various countries, the mood seems to be different. In the past, due to the different levels of Attorney’s fees in a large firm, it was often necessary to target the top few largest firms in each country when making an appointment. It was working during the meeting. I don't have such concerns now while I start my own business. Besides looking at the professional fields of each agent, only our personalities clicked enough. It feels like making friends! It is so exciting to know many new trademark lawyers or agents worldwide in INTA this year.

 

Of course, I also met some old friends again. Some of these trademark lawyers or agents worldwide have known each other for more than ten years. They still gave me full support after I left Formosa Transnational to start my own business. Some agents, who had the same experience as me and also started a business afterward, provided much advice about their entrepreneurial experience.

 

There are so many friends worldwide still willing to support me after so many years of acquaintance, after three years of the epidemic, and after I no longer enjoy the halo of the large law firm. I never thought I would gain such fruits from attending INTA Annual Meetings. I was deeply moved by these old friends.

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
Contact Email :  info@avail.com.tw
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Ching-I Lu / 10F., No. 578, Huajiang 1st Rd., Banqiao Dist., New Taipei City, Taiwan (R.O.C.).

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