Taiwan’s IP office publishes translations of its most significant cases of the past five years

On 12 May 2022, the Taiwan Intellectual Property Office (TIPO) announced that the Chinese and English versions of “Briefs of Classic Trademark Cases in Recent Years” are now available on its website.

Background

The TIPO hopes to assist those who are interested in the development of Taiwan’s trademark system and the practice of trademark law in the courts. To this end, the TIPO has selected classic cases from the Intellectual Property and Commercial Courts from the past five years and made them available for download on its website. The office has published seven judgments and their English translations.

Key issues

The judgments cover the following important questions in the field of trademarks:

  • How should the scope “of the same nature” of a specific type of good be determined?
  • Can the designated services provided by the trademark registrant abroad demonstrate use of the Taiwan-registered trademark?
  • Two trademarks have a low degree of similarity, but are used for highly similar services. Is there likelihood of confusion among relevant consumers?
  • Does the scope of protection of a trademark vary according to its level of recognition?
  • Is parody a defence of infringement?
  • Does using another person’s registered word mark as a keyword in search-engine advertisement constitute infringement?

The judgments also acknowledge that one may not use exhaustion of trademark rights as a defence if one sells goods without the registrant’s or licensee’s original packaging.

However, not all of the published and translated judgments are the final versions. Several are now pending before the Supreme Administrative Court. The most controversial is the second judgment on the issue of provision of designated services outside Taiwan.

Tokyu Corporation (TOKYU) owns a trademark registration (No 01768451) in Taiwan for Chinese characters 東急 identifying department store services. A revocation action was filed by a Taiwan company against said trademark registration in Taiwan.

TOKYU submitted use evidence indicating that they had sent coupons and promotional leaflets to Taiwanese consumers who attended a tourism exposition in Taiwan. The TIPO recognised the use of evidence and issued a decision in favour of TOKYU.

After the petitioner in the revocation action and TOKYU successively appealed to the Ministry of Economic Affairs and the IP Court, the latter reached a judgment against TOKYU. The court considered that TOKYU has no department store in Taiwan. Taking into account the fact that most of the company’s services and transactions occur in Japan, the evidence of use was not considered sufficient to justify registering the mark in Taiwan.

TOKYU has filed a second-instance administrative lawsuit with the Supreme Administrative Court. Taiwan’s trademark law scholars and practitioners as well as Japanese tourism operators are looking forward to the court’s final judgment.

Looking to the future

The briefs of classic trademark cases will be of great benefit to those interested in gaining a more comprehensive understanding of Taiwan’s trademark laws and practices. The TIPO intends to select more important judgments in the future, so stay tuned.


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