After undergoing three readings by the Legislative Yuan, the new Amendment to Taiwan’s Trademark Law was passed on May 31, 2011, and is expected to take effect on July 1, 2012. While the Amendment makes a number of modifications to the Law, the key changes are highlighted below:
I. Regarding filing for registration of trademarks
1. Motion marks and hologram marks are now registrable trademarks.
2. In keeping with the provisions of Article 11 of the Paris Convention regarding exhibition priority, where a person has displayed goods or services under a trademark at a government-sponsored or officially recognized international exhibition, he may, within a period of six months from the date of the first display of the goods or services under the mark, file an application for registration of the trademark claiming the exhibition date as the filing date.
3. The old practice of being able to pay the registration fee in two installments is abolished. On the other hand, under the Amendment, an applicant who has unintentionally failed to pay the registration fee within the statutory deadline will be allowed to reinstate his right to the registered trademark within the six months after the deadline, with a payment of double the original amount.
4. The Trademark Office may refuse to accept a letter of consent submitted by the applicant of a trademark application to traverse a citation rejection if the consent is obviously improper.
II. Regarding Invalidation or Cancellation
Where an invalidation or cancellation action is filed based upon a trademark registered for over three years, the trademark proprietor shall submit evidence of use, or evidence justifying non-use, of the based-upon trademark established within the three years prior to the filing date of the invalidation or cancellation action.
Further, “trademark use” is more specifically defined in the Amendment.
III. Trademark Infringement
1. The Amendment endows the owner of a well-known trademark with broader protection. To claim infringement, the owner of a well-known trademark need only prove that another’s use of an identical or similar trademark is likely to impair the distinctiveness or reputation of the well-known trademark. On the other hand, to avoid abuse of trademark rights, the current provision that unauthorized use of a third party’s registered mark as one’s company name, trade name, domain name, etc. constitutes trademark infringement is abolished.
2. Under the Amendment, if a person is aware of the likelihood of infringement but still knowingly manufactures, displays, sells, imports, or exports tags, labels, packaging or service-related articles not yet associated with goods or services, his such conduct shall constitute infringement.
3. The Amendment replaces the current provision in the Trademark Law that a trademark proprietor may claim as damages an amount “in between five hundred and one-thousand five hundred times the unit selling price of the infringing articles” with an amount “below one-thousand five hundred (1,500) times the unit selling price of the seized infringing articles.” The further provision “where the quantity of the seized infringing articles is in excess of one-thousand five hundred (1,500), the total selling value of the seized articles shall be deemed as the damages” remains unrevised.
4. The current provision that a trademark proprietor may claim as damages an amount “in between five hundred and one-thousand five hundred times the unit selling price of the infringing articles. Where the quantity of the infringing articles is in excess of one-thousand five hundred times the unit selling price of the infringing articles, the damages shall be calculated as the total selling value of the confiscated articles” is replaced by “an amount below one-thousand five hundred (1,500) times the unit selling price of the seized infringing articles. Where the quantity of the seized infringing articles is in excess of one-thousand five hundred (1,500), the total selling value of the seized articles shall be deemed as the damages.
5. In addition to the several methods provided by the current Trademark Law for a trademark proprietor to choose from to calculate his damages in view of infringement, the Amendment further stipulates that an amount within reason, equivalent to a compensation that would have been received if the trademark proprietor had licensed his trademark to the infringer, may be claimed as damages.
IV. Customs Border Control and Supervision
1. The stipulations under which Customs may ex officio conduct search and detention are included in the Amendment.
2. Customs, upon ensuring the safety and confidentiality of detained goods, can entertain requests from the trademark proprietor or the owner of the detained goods to inspect the detained goods, and may provide the relevant information concerning the goods to the trademark proprietor.
3. A trademark proprietor may, with a deposit of security bond, request to borrow from Customs samples of detained goods to verify for infringement.
V. Certification Marks
Filing requirements and other relevant regulations regarding geographic certification marks are more clearly defined in the Amendment while penalties for direct and indirect infringement of certification marks are also specified.