2016.09.23
Jane Tsai
I. Evolution of the stipulation “for the purpose of marketing” under Article 5 of the current Trademark Law
The definition of the use of a trademark under the Trademark Law in Taiwan has always been linked to “marketing.” However, it was not until 1993 when various kinds of trading patterns were included to specifically stipulate that the possession, display or distribution “for the purpose of marketing” was clearly identified as the use of a trademark, and this is no longer limited to circumstances of “marketing in the market” or “marketing in domestic or overseas markets or for export”:
1. Article 6 of the Trademark Law amended in 1972 defined the use of a trademark as “the use of a trademark in goods or on packages or containers thereof for marketing in the market”;
2. Article 6, Paragraph 1 of the Trademark Law as amended in 1983 defined the use of a trademark as “the use of a trademark in goods or on packages or containers thereof for marketing in the domestic market or for export;”
3. The stipulation “for the purpose of marketing” first appeared in Article 6, Paragraph 1 of the Trademark Law as amended in 1993, which provided that “this refers to the possession, display or distribution through the use of a trademark in goods or on the packages, containers, labels, specifications, price list or similar documents thereof for the purpose of marketing”;
4. Article 6, Paragraph 1 of the Trademark Law as amended in 1993 defined the use of a trademark as “the use of a trademark, for the purpose of marketing, in goods, services or relevant articles thereof or the use of two dimensional graphics, digital audios or videos, electronic media or other media sufficient to cause relevant consumers to recognize it as a trademark”;
5. Article 5 of the Trademark Law as amended in 2011 (i.e., the current law) defines the use of a trademark as follows: “This refers to any of the following circumstances, for the purpose of marketing, where it is sufficient to cause relevant consumers to recognize it as a trademark:
(1) To use the trademark in goods or on the packages or containers thereof.
(2) To possess, display, sell, export, or import the goods referred to in the preceding subparagraph.
(3) To use a trademark in articles relating to the provision of service.
(4) To use a trademark in commercial documents or advertisements relating to goods or services.” _
II. What does the stipulation “for the purpose of marketing” refer to?
According to the legislative reasons for amending the current Trademark Law, “the expression ‘for the purpose of marketing’ is similar to the concept of “in the course of trade” under Article 16, Paragraph 1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).” Therefore, the essence of “for the purpose of marketing” is the same as “in the course of trade” in that both refer to profit-oriented trading acts or trade circulation and are not necessarily limited to sales or distribution for payment. In addition, according the discussions conducted during a seminar organized by the Intellectual Property Office on the application of the Trademark Law in 2014, the Intellectual Property Office held that regardless of expressions such as “for the purpose of marketing” or “in the course of trade,” whose interpretation is slightly different, still neither of them deviates from the business nature requirement. In addition, “for the purpose of marketing” does not mean in a narrow sense to directly promote or sell products or services for considerations. If the functions of promoting sales are achieved and are closely linked to sales, this should be deemed to have marketing purposes as well.