Changes in the Taiwanese Trademark Act

In Insights, Uncategorized

1 December, 2011

The following amendments to the Taiwanese trademark Act has been announced by the authorities. The effective date is however still to be set by a further order.

Any distinctive identification may be registered as a trademark, including inter alia three dimensional laser tags and the boot screen of a mobile phone. 

Exclusive trademark licenses and non exclusive licenses are clearly differentiated. The holder of an exclusive license has the right, within the scope of the license, to prevent others (including the trademark owner) to use the trademark, to sublicense the trademark and to initiate proceedings against infringements in its own name. The above cannot be done by the holder of a non exclusive license without the consent of the trademark owner.

 The provisions for a deemed trademark infringement has been amended as follows:

  •  It is deemed to be a trademark infringement when using words included in a well known registered trademark as a company name since this will be deemed to be likely to dilute the distinctiveness or reputation of the well known trademark.
  • However the provision that it shall be deemed to be a trademark infringement to use word included in a trademark as a company name will be deleted. The deemed infringement will only apply to well known trademarks.
  • It shall be deemed as a trademark infringement to sell, display, hold, produce, export or import the packaging containers, tags, labels and/or other things related to the service, knowing that the same may be used for infringing acts.

Acts typically constituting use of the trademark has been specified as follows:

  • Utilizing the trademark on commercial documents or advertisements related to the goods and/or services
  • Utilizing the trademark on things related to the provision of service
  • Utilizing the trademark on the goods, or on the packaging containers for the goods and to hold, sell, display, import or export the goods in question

The above indicates that the Taiwanese authorities want to broaden the scope of possible trademarks and clarify some issues that previously might have been ambiguous.

Peter Hermansson, Attorney at Law 

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