The Intellectual Property Court rendered the 108-Min-Shang-Su-1 Decision of May 7, 2019 (hereinafter, the “Decision”), holding that if a trademark owner asserts an inaction claim to eliminate or prevent trademark infringement by an infringer, it is only necessary to determine if the infringer objectively engages in any factual infringement or is likely to infringe with no need to explore the subjective criteria for the infringer.
According to the facts underlying this Decision, the Plaintiff’s company was set up in 1989 and registered a trademark and a service mark in 1990. The Defendant used two words contained in the trademark at issue as the specially selected portion of its company name on December 18, 2014 without the Plaintiff’s permission when setting up its company to do business in public and using the trademark.
According to the Decision, if a trademark owner asserts an inaction claim to eliminate or prevent trademark infringement by an infringer, it is only necessary to determine if the infringer objectively engages in any factual infringement or is likely to infringe with no need to explore the subjective criteria for the infringer. In addition, the well-known registered trademark under Article 70, Subparagraphs 1 and 2 of the Trademark Law does not differentiate the general perception of the general consumers or relevant consumers. Instead, as long as a trademark is a well-known registered trademark in Taiwan, a third party certainly shall not infringe the trademark in violation of Article 70, Subparagraphs 1 and 2 of the Trademark Law.
It was further pointed out in this Decision that the likelihood of confusion and misidentification among relevant consumers, for the purpose of determining if two trademarks are confused or misidentified, should be generally determined by considering the following factors: (1) the strength of the distinctiveness of the trademarks; (2) the similarity and the extent of similarity between the trademarks; (3) the similarity and the extent of similarity between goods or services; (4) the status of diversified operation of the earlier rights holder; (5) the actual circumstances of confusion or misidentification; (6) the extent to which the relevant consumers are familiar with the trademarks; (7) the good faith or bad faith of the application of the trademark at issue; and (8) other factors of confusion or misidentification. The factors referenced to determine the likelihood of confusion or misidentification are interactive among each other. Basically, the more one of the factors plays out, the less the requirements for the other factors are needed. In consideration of the evidence that such trademark went through several examination decisions of the administrative agency, which affirmed that the trademark at issue was a well-known mark and designated for services such as “agency for the import/export trade and distribution of all kinds of goods, books, stationery, pictures and artworks” it can be concluded that the trademark at issue had become a well-known registered trademark in Taiwan by December 18, 2014 when the Defendant’s company was set up. There is no direct association between the trademark at issue and the designated services or direct explanation or description relating to the services per se to the extent that the relevant consumers can recognize the trademark as a mark that identifies the services and their sources. The services for which the Plaintiff’s trademark at issue was designated include the service of “personnel management consultation.” According to general social constructs and common market trading practices, “personnel management consultation” and “manpower intermediaries” are both part of personnel and human resources services and can be considered to be highly similar services. The lines of business operated by the Plaintiff were quite broad and were extensively promoted in all kinds of well-known mass media. Therefore, the Plaintiff’s claim asserted in this matter in accordance with Article 70, Subparagraph 2 and Article 69, Paragraph 1 of the Trademark Law is well-grounded since the trademark at issue was likely to cause confusion and misidentification among the relevant consumers.