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Trademark |
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I. |
The New Trademark Act Will Be Enforced on July 1, 2012 |
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According to the News announced by the TIPO on March 27, 2012, the new Trademark Act will be enforced on July 1, 2012 as prescribed by the Executive Yuan. For more details about the new Trademark Act, please refer to our Newsletter issued in February 2012. We will be pleased to provide you with the related information upon receiving your request. |
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(Source: TIPO News published on March 27, 2012)
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II. |
A Trademark Right Infringement Shall Be Deemed To Have Occurred If One Uses The Word(s) Contained In A Well-known Trademark As The Company Name (a written judgment No.20 made by Intellectual Property Court in 2011) |
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(* The trademarks registered by the Plaintiff. )
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The Plaintiff claimed that the registration of the company name 統一生醫科技股份有限公司(the Chinese name of President Bioscience Co., Ltd.) violates the Trademark Act, Article 62: |
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A trademark right infringement shall be deemed to have occurred where consent of trademark right holder is absent from any of the following conditions: |
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1. Knowingly using a trademark identical or similar to a well-known registered trademark of another person, or using the word(s) contained in the said well-known trademark as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence diluting the distinctiveness or reputation of the said well-known trademark; or |
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2. Knowingly using the word(s) contained in a registered trademark of another person as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence causing confusion to relevant consumers of goods or services thereof. |
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The judge of IP Court made a decision that the company name, 統一生醫科技股份有限公司(President Bioscience Co., Ltd.) should be cancelled, since it violates the Article 62 of Trademark Act because of the following reasons: |
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1. |
The Plaintiff established their company early in 1967 in the business field of foodstuff industry. Their trademarks (as shown above) have become well-known ones in Taiwan and worldwide for many years. In addition to the products of foodstuff, they have gradually extended their business fields to nutriment and food supplements which have also become famous in Taiwan and worldwide in recent years. According to a Judgment made by Taiwan High Court in 2008, “統一” owned by the Plaintiff has been recognized as a well-known trademark. |
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2. |
The Plaintiff established an affiliated company named 統一生命科技股份有限公司(President Life Science Co., Ltd.) in 2003 for mainly manufacturing the products of nutriment and food supplements. The defendant’s company name 統一生醫科技股份有限公司(President Bioscience Co., Ltd.) will be regarded as one of the Plaintiff’s affiliated companies by the consumers and hence dilute the distinctiveness or reputation of the said well-known trademarks. Although the defendant argued that they are manufacturing “mouth masks” which will not cause confusion to relevant consumers of goods thereof, it is not an important condition when alleging the 1st paragraph of the Article 62 of the Trademark Act. |
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3. |
Furthermore, the defendant uses 統一生醫科技股份有限公司(President Bioscience Co., Ltd.) as their company name, in which “統一” is not only the same as the Plaintiff’s well-known trademarks but also similar to the Plaintiff’s registered marks “統一生技中心” or “統一生命科技中心”(these two marks mean “President Life Science Center”). Although the dependant argued that their products “mouth masks” would not cause confusion to relevant consumers of goods thereof, the dependant’s business field includes wholesale and retail services of medical appliances which is the same as the business field of the Plaintiff’s affiliated company 統一生命科技股份有限公司(President Life Science Co., Ltd.). So, the defendant’s company name will easily cause confusion to the related consumers to misunderstand that the products sold by the defendant come from the same source of the Plaintiff or misunderstand that the defendant is an affiliated company or licensee or franchisee of the Plaintiff.
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4. |
Though the defendant argued that the registration of their company name complies with the official requirement of the Company Act, the Article 18 of the Company Act only stipulates that “no company may use a corporate name which is identical with that of another company.” So, the registration of a company name will be allowed when the later one is not totally identical with other prior registered one. When the matter of an unfair competition is occurred, the disputes should be handled according to Fair Trade Act or Trademark Act. The Judge did not agree that the registration of the defendant’s company name according to the Company Act can prevent the defendant from violating other laws, so defendant’s arguments were rejected. |
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(Source: TIPO Newsletter issued on March 5, 2012)
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