Pursuing a fair and balanced trademark protection in Taiwan

On May 31, 2011, the Legislative Yuan passed an amendment to the Trademark Act, which was revised in 2003. The amendment has revised 71 articles, added 26 and deleted nine, resulting in a total of 111 articles in the Trademark Act.

The promulgation date of the amendment is to be determined after corresponding measures are completed. In the amendment, the 2009 Singapore Treaty on the Law of Trademarks (STLT) influenced the following matters:

• Relaxing protectable subjects for trademarks—the amendment allows any signs that have met the distinctiveness requirement of a trademark to be registered and protected under the trademark law. Non-conventional signs, including motion marks and hologram marks, are subject to registration protection so long as the relevant consumers recognise them as indications of origins of goods or services.

• Providing relief measures for missing the time limit—applicants who make procedural mistakes such as missing the designated deadline to respond to the trademark office may have the opportunity to make a correction before the issuance of an official decision. However, applicants failing to comply with the statutory time limit without due cause will forfeit their rights.

The current payment mechanism of the two-instalment registration fee is abolished; however, applicants who inadvertently fail to meet the due date for registration payment may reinstate their rights if a double payment is made within six months of the due date.

• Supplementary definitions for exclusive and non-exclusive licence— trademark proprietor may license out his/her right to an exclusive or non-exclusive licensee in an entire or restricted geographic location, and may record the licence with the trademark office. The exclusive licensee has the right to enforce their right on their own behalf when the trademark is infringed in the scope of their licence.

The amendment also takes into consideration the trademark laws of some major jurisdictions to develop fair and balanced trademark protection for rights holders and the public. It:

• Distinguishes the trademark proprietors’ legitimate use of a mark from the infringing use of another’s trademark right. For maintenance of the right, the trademark shall be used in relation to goods or services, and for sales and marketing purposes, including online use and use in electronic forms. However, the infringing use of a trademark encompasses not only activities for the sales of goods and services, but also the possession and display of trademarked articles that have not combined with goods or services, i.e. labels or tags.

• Identifies indicative use as a type of fair use of a trademark right— indicative use of another’s trademark, such as for comparative advertising, repairing services for trademarked goods and indicating compatibility with another’s products, will be exonerated from the binding effect of the relevant trademark right.

• Requires proof of use for trademarks registered for more than three years when an invalidation or revocation proceeding is initiated against an allegedly similar trademark—the new requirement enables the likelihood of confusion for two trademarks to be ultimately determined by the actual use of the marks and the recognition of relevant consumers in the marketplace.

• Lowers the threshold of infringement for well-known trademark registrations—mere likelihood of dilution to the distinctiveness or reputation of the mark will suffice to demonstrate infringement of a wellknown trademark right.

• Abolishes the stipulation of infringement by knowingly using words of another company’s trademark registration in a company name, trade name or domain name—the current stipulation has been abused by trademark owners issuing excessive warning letters.

• Adds intent as a condition for damages awards and removes the statutory threshold for damage awards (500 times the retail price), to avoid damages being awarded that are obviously disproportionate to minor infringements.

The amendment is also expected to settle some long-term judicial disputes regarding infringement and has specific regulations for customs border measures.