2020 年 10 月 1 日

Trademark disputes should be heard under the principle of case-by-case review and are not bound by the judgement of another case (Taiwan)

Yuki Chiang The Supreme Administrative Court rendered the 109-Pan-151 Decision in March 19, 2020 (hereinafter, the “Decision”), holding that in view of the differences between different cases in terms of facts and types of evidence for trademark disputes and the […]
2020 年 9 月 1 日

If the trademark holder claims that the trademark is a well-known mark, it shall provide sufficiently objective evidence to proof that the trademark has been generally recognized by relevant businesses or consumers (Taiwan)

Yuki Chiang The Intellectual Property Court rendered the 108-Min-Shang-Su-61 Decision of April 28, 2020 (hereinafter, the “Decision”), holding that although a trademark holder asserting that the trademark is a well-known mark, still the trademark shall not be regarded as a […]
2019 年 8 月 31 日

Formulation of the Operating Guidelines for Third-Party Opinions in Trademark Registration Applications (Taiwan)

Ankwei Chen The Ministry of Economic Affairs promulgated the Operating Guidelines for Third-Party Opinions in Trademark Registration Applications (the “Guidelines”) in its Jing-Sho-Zi-10820031571 Directive dated June 20, 2019, effective immediately.  The Guidelines are highlighted below. Point 1 states that the […]
2019 年 7 月 31 日

When a trademark owner uses a registered trademark by changing its device, the registered trademark should be deemed used only if this is sufficient to cause the consumers to perceive that such changed trademark is the same as the original registered trademark according to general social constructs (Taiwan)

2019.1.17 Hsiao-Han Su The Supreme Administrative Court rendered the 108-Pan-29 Decision of January 17, 2019 (hereinafter, the “Decision”), holding that when a trademark owner uses a registered trademark by changing its device, the registered trademark should be deemed used only […]
2019 年 2 月 28 日

The trademark right of an unregistered trademark not protected even though it is used earlier; however, the holder of the earlier used trademark is exceptionally granted with a remedy right to avoid trademark squatting conducted by plagiarizing and imitating a trademark created by another person (Taiwan)

2018.11.15 Hsiao-Han Su The Supreme Administrative Court rendered the 107-Pan-673 Decision of November 15, 2017 (hereinafter, the “Decision”), holding that the trademark right of an unregistered trademark is not protected even though it is used earlier; however, the holder of […]
2018 年 12 月 31 日

Although the evidence of use for trademarks or marks is not limited to domestic evidence, still the precondition is that overseas evidentiary materials should be knowable to relevant domestic enterprises or consumers (Taiwan)

2018.8.2 Jane Tsai The Supreme Administrative Court rendered the 107-Pan-446 Decision of August 2, 2018 (hereinafter, the “Decision”), holding that although the evidence of use for trademarks or marks is not limited to domestic evidence, still the precondition is that […]
2018 年 8 月 31 日

Materials distributed for a conference, and publications made based on the papers published at such conference, are merely incidental publications of the conference, and whether there is trademark use shall be determined through a detailed investigation (Taiwan)

2018.5.31 Ankwei Chen The Supreme Administrative Court rendered the 107-Pan-Zi-301 Decision on May 31, 2018 (the “Decision”) in which it held that materials distributed for a conference, and publications made based on the papers published at such conference,   are merely […]
2018 年 7 月 31 日

If a trademark applicant who becomes aware of a trademark used earlier by another person intends to imitate such trademark by registering a similar trademark for use on similar goods, such registration shall be prohibited, and this is not a precondition by whether the relevant public or consumers are likely to be confused or led to misidentification (Taiwan)

2018.5.24 Jane Tsai The Intellectual Property Court rendered the 106-Hang-Shang-Su-149 Administrative Decision of May 24, 2018 (hereinafter, the “Decision”), holding that if a trademark applicant who becomes aware of a trademark used earlier by another person intends to imitate such […]
2018 年 6 月 30 日

Although the plaintiff in a trademark infringement lawsuit did not substantiate actual confusions or misidentifications, still the likelihood of confusions and misidentification were shown in the results of a market survey commissioned to a market survey institution upon application by the defendant in this lawsuit (Taiwan)

2018.4.16 Jane Tsai The Plaintiff was the rights holder of the “臺北101” and “TAIPEI 101” series of trademarks (hereinafter, the “Opposing Trademarks”) and asserted in its complaint that the Defendant had applied for the trademark at issue, which was canceled […]
2018 年 2 月 28 日

The fact finding in a trademark revocation case should be based on the timing of the revocation application (Taiwan)

2017.11.30 Jane Tsai The Supreme Administrative Court rendered the 106-Pan-656 Decision of November 30, 2017 (hereinafter, the “Decision”), holding that the regulatory objective suggests that a trademark revocation case should rely on the timing of revocation application as its factual […]
2018 年 1 月 31 日

Whether a text used by a trademark is inherently distinctive should depend on whether such text is an existing word or thing (Taiwan)

2017.11.8 Jane Tsai The Intellectual Property Court rendered the 106-Hang-Shang-Su-48 Administrative Decision of November 8, 2017 (hereinafter, the “Decision”), holding that if a text is used to indicate or differentiate the sources of goods or services, whether the text is […]
2017 年 12 月 31 日

When a word mark is used by changing the orientation of the word arrangement or font, this shall still be deemed a trademark use as long as this is sufficient to cause relevant consumers to identify such words as the same trademark as a registered trademark(Taiwan)

2017.10.25 Jane Tsai The Intellectual Property Court rendered the 106-Hang-Shang-Su-14 Administrative Decision of October 25, 2017 (hereinafter, the “Decision”), holding that when a word mark is used by changing the orientation of the word arrangement or font, this shall still […]
2017 年 10 月 31 日

A lawyer who handles trademark-related business is only required to join any bar association within the jurisdiction of the IPO in order to perform his/her duty before the IPO(Taiwan)

2017.8.21 Jane Tsai The Ministry of Justice issued the Fa-Jian-10600124710 Circular of August 21, 2017 (hereinafter, the “Circular”) to communicate that lawyer who handles trademark-related business is only required to join any bar association within the jurisdiction of the Intellectual […]
2017 年 9 月 30 日

Although the disclaimed portion of a trademark device is included for overall trademark comparison, still since non-distinctive portions are not identifiers that identify the sources of goods or services, the non-distinctive portions will be given less attention at the time of comparison(Taiwan)

2017.7.13 Jane Tsai The Intellectual Property Court rendered the Hang-Shang-Su-152 Administrative Decision of July 13, 2017 (hereinafter, the “Decision”), holding that with respect to non-distinctive portions of a trademark device with or without a disclaimer, when its similarity with another […]
2017 年 8 月 31 日

Trademark identity means that although the trademark which is actually used is slightly different from a registered trademark in form, still the main distinctive features of the registered trademark are not substantively changed(Taiwan)

2017.6.29 Jane Tsai The Intellectual Property Court rendered the 105-Hang-Shang-Su-139 Decision of June 29, 2017 (hereinafter, the “Decision”), holding that trademark identity means that although the trademark which is actually used is slightly different from a registered trademark in form, […]
2017 年 8 月 8 日

The gist of presumed trademark infringement under Article 70, Subparagraph 2 of the Trademark Law should not be limited to infringement patterns where two trademarks are completely “identical”(Taiwan)

2016.11.17 Jane Tsai According to the 104-Min-Shang-Shang-22 Civil Decision of November 17, 2016 rendered by the Intellectual Property Court, the Appellant used “____” [phonetically spelled as “Fu Lan De Lin”] as the specially selected portion of its company name. Although […]
2017 年 8 月 8 日

If any person rushes to register a trademark merely because of the knowledge that the trademark has been used by another person first, the trademark registration may certainly be canceled pursuant to law, regardless of whether such earlier trademark is a famous trademark in Taiwan or elsewhere and whether it has been registered(Taiwan)

2016.10.20 Jane Tsai The Intellectual Property Court rendered the 105-Hang-Sang-Su-30 Administrative Decision of October 20, 2016 (hereinafter, the “Decision”), holding that if any person rushes to register a trademark merely because of the knowledge that the trademark has been used […]
2017 年 8 月 8 日

Although the determination of whether a trademark is used should also take into account the goods to be put on the market, still such use should be sufficient to cause the consumers to identify it as a trademark(Taiwan)

2016.07.28 Jane Tsai The Supreme Administrative Court rendered the 105-Pan-394 Decision of July 28, 2016 (hereinafter, the “Decision”), holding that although the determination of whether a trademark is used should also take into account the goods to be put on […]
2017 年 8 月 8 日

Whether a mark is a famous mark should be determined based on the general perception of relevant enterprises or consumers within the territories of the Republic of China(Taiwan)

2016.08.11 Jane Tsai The Intellectual Property Court pointed out in its 105-Hang-Shang-Su-31 Administrative Decision of August 11, 2016 (hereinafter, the “Decision”) that whether a mark is a famous mark should be determined based on the general perception of relevant enterprises […]
2017 年 8 月 8 日

Paragraph 2 of Article 63 of the Trademark Law applies and the trademark authority may cancel the trademark registration of a trademark holder only when the trademark holder is clearly aware or should have been aware that the licensee is subject to all of the criteria under Article 63, Paragraph 1, Subparagraph 1 of the Trademark Law without raising any objection(Taiwan)

Jane Tsai The Supreme Administrative Court rendered the 105-Pan-283 Decision of June 2, 2016 (hereinafter, the “Decision”), holding that the trademark authority may cancel the trademark registration of a trademark holder only when it does not raise any objection when […]
2017 年 8 月 8 日

When the strength of a trademark’s distinctiveness is argued, examination should not be conducted by differentiating or splitting the words in the trademark(Taiwan)

Lenore Chen The Supreme Administrative Court rendered the 105-Pan-231 Decision of May 12, 2016 (hereinafter, the “Decision”), holding that when the strength of a trademark’s distinctiveness is argued, examination should not be conducted by differentiating or splitting the words in […]
2017 年 8 月 8 日

A suggestive mark is different from a descriptive mark for being distinctive(Taiwan)

Jane Tsai The Intellectual Property Court rendered the 104-Hang-Shang-Su-131 Decision of April 14, 2016 (hereinafter, the “Decision”), holding that a suggestive mark, which suggests the relevant features of the designated goods or services by implicit or metaphoric means, is distinctive. […]
2017 年 8 月 8 日

The Supreme People’s Court on Issues in the Hearing of Trademark Grant and Ownership Administrative Decisions(Mainland China)

2017.01.10 James Cheng The Supreme People’s Court promulgated Rules from the Supreme People’s Court on Issues in the Hearing of Trademark Grant and Ownership Administrative Decisions (the “Provisions”) to address issues in trademark grant and ownership decisions between the Trademark […]
2017 年 8 月 8 日

Whether a trademark is famous should be determined based on the perception of domestic consumers(Taiwan)

2016.12.21 Jane Tsai The Intellectual Property Court rendered the 105-Hang-Shang-Su-55 Administrative Decision of December 21, 2016 (hereinafter, the “Decision”), holding that whether a trademark is famous should be determined based on the perception of domestic consumers. According to the facts […]
2017 年 5 月 31 日

Whether two trademarks are likely to cause confusion in the market ultimately should be determined based on the actual circumstances concerning the use of the trademarks of both parties to satisfy the necessity of trademark protection, and this is also how a trademark registration case differs from a trademark invalidation case in the basis of consideration(Taiwan)

2017.3.30 Jane Tsai I. Summary of facts: 1. The Plaintiff designated “CROWN&FANCY and Device (crown shape)” for use on goods such as tea, coffee, tea candy, moon cakes and sushi. The mark was registered as No. 1285991 Trademark, whose right […]
2017 年 4 月 30 日

The front and back sides of the purses offered for sale were both embossed with EPI pattern very similar to that of the Trademark at Issue and the sales orientation constituted trademark use rather than just decoration of products with such pattern(Taiwan)

2017.2.23 Jane Tsai The Intellectual Property Court rendered the 105-Min-Shang-Shang-10 Civil Decision of 2016 (hereinafter, the “Decision”), holding that the front and back sides of the purses offered for sale were both embossed with EPI pattern very similar to that […]