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Trademark |
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I. |
An amendment to the Schedule of Article 19 (Corresponding to Nice Classification 11th edition, version 2017) of the Enforcement Rules of the Trademark Act |
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According to Taiwan Trademark Act, Articles 19.1, “An application for trademark registration shall be made to the Registrar Office by submitting an application containing (the name and address of) the applicant, a reproduction of the trademark, and the list of designated goods or services” and 19.5, “Classification of goods or services referred to in the preceding paragraph shall be prescribed by the Enforcement Rules of this Act”.
The present Classification of designated goods and services in Article 19 of the Enforcement Rules of Trademark Act was established on July 15, 1994 according to International Classification of Goods and Services which was instituted by Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. And, the present Classification of designated goods and services in Article 19 of the Enforcement Rules of Trademark Act has been modified several times in order to follow the International Classification of Goods and Services.
The 11th edition of the International Classification of Goods and Services was published on January 1, 2017. Terms of Classes 3, 6, 10, 14, 16, 17, 18, 20, 21, 22, 24, 26, 28, 31 and 45 in Schedule of Article 19 (corresponding to Nice Classification 11th edition, version 2017) have been modified and promulgated on March 16, 2017 by the Ministry of Economic Affairs as shown in the table below. |
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Schedule of Article 19 of the Enforcement Rules of the Trademark Act |
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List of Classes of Goods and Services |
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Goods |
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Amended Classes |
Terms |
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03 |
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices. |
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06 |
Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; metal containers for storage or transport; safes.; ores. |
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10 |
Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles. |
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14 |
Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments. |
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16 |
Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists’ and drawing materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching materials (except apparatus); plastic sheets, films and bags for wrapping and materials for packaging (not included in other classes); printers’ type;, printing blocks. |
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17 |
Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal. |
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18 |
Leather and imitations of leather; animal skins and hides; trunks and travelling bags; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals. |
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20 |
Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, ivory whalebone or mother-of-pearl; shells; meerschaum; yellow amber. |
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21 |
Household or kitchen utensils and containers; combs and sponges; brushes, (except paintbrushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass, (except glass used in building glass); glassware, porcelain and earthenware. |
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22 |
Ropes and string; nets; tents, awnings and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, (except of paper, cardboard, rubber or plastics); raw fibrous textile materials and substitutes therefor. |
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24 |
Textiles and substitutes for textiles; bed covers; table covers household linen; curtains of textile or plastic. |
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26 |
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair. |
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28 |
Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees. |
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31 |
Raw and unprocessed Aagricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt. |
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Services |
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45 |
Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals. |
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TIPO News March 21, 2017
https://www.tipo.gov.tw/ct.asp?xItem=618481&ctNode=7452&mp=1
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II. |
Adding “FAKE” to a Pirated Trademark Still Constitutes the Likelihood of Confusion |
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Without the registrant’s consent, the defendant bought the clothing bearing the mark  consisting of a device very similar to the famous double C mark and an English word “FAKE” via Internet and sold the said clothing on PChome eBay Co., Ltd. The seller (defendant) was accused after being investigated by the Second Special Police Corps and the Prosecutor. |
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The Court’s Viewpoints |
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The Chanel’s double C mark has been extensively used in Taiwan market and abroad for a long time which makes the mark well-known and well acquainted by general consumers. The double C mark is highly distinctive. The defendant uses the very similar double C device on clothing products, which may lead the general consumers to misunderstand that the counterfeit products come from Chanel or its related business entities. Though the word “FAKE” is shown under the device, the general consumers may still get confused due to the very similar double C device. So, the likelihood of confusion is constituted.
In this case, it seems that the Court focuses on the likelihood of confusion. Besides the similarity between the real mark and the counterfeit device, the idea of trademark parody has been applied in the similar situation.
The case “Monogram Double C Device” (Taiwan IP Court Criminal Judgment No. 63) made in 2014 is an interesting case to discuss the issue of parody usage of trademarks.
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Marks at issue: |
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Question: Is the Defendant’s mark a parody usage of trademark? |
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The Court’s viewpoints: |
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1. |
The Monogram double C device is very similar to the Chanel’s mark. Though the melting design is the most characteristic feature of the Monogram double C device, the double C device is still very similar to Chanel’s mark. This causes the likelihood of confusion to the general consumers. |
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2. |
Chanel’s mark has been a well-known mark in Taiwan market. Because of the well-knownness, Chanel’s mark has the stronger distinctiveness. |
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3. |
The Monogram double C device is placed on front of shopping bags to identify itself and for the consumers to distinguish it from others. This fact may cause the consumers to misunderstand that the sources of the products are parents or affiliated companies due to the high similarity and well-knownness of Chanel’s double C mark. |
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4. |
The defendant further brought up the idea of trademark parody in their arguments. The Court replied that though the melting design can be considered a work of humor and amusement, the defendant did not tell anything about what the reverse and contradictory image stands for. Since no culture or society value is found, the Court deemed that it is merely a “free-rider” action which should not be protected by sacrificing the Chanel’s trademark rights. |
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Though, in the USA, several cases applying trademark parody succeeded in the Court, the verdicts revealed that trademark parody has to carry no negative implied meaning to the original marks. Furthermore, when applying the concept of trademark parody, the applicant must not adopt too many elements from the original mark to lead to the likelihood of confusion.
Back to the “ Double C device and FAKE” on the top, though the double C device may not imply negative meaning, the word “FAKE” may still cause a controversial issue. Nevertheless, the high similarity between the melting double C mark and the Chanel’s mark has constituted the likelihood of confusion which makes no room for trademark parody.
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TIPO Newsletter on March 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10239.htm#616721
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III. |
Does a trademark license contract have to be in writing to be valid? |
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1. |
Facts: |
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(1) |
The trademark registration of "CK" is owned by a HK company, C.K. Hair International Limited (the Plaintiff). |
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(2) |
The U.S. company, Calvin Klein Tra demark Trust, applied to revoke the trademark registration of CK on May 8, 2006 due to the ground of non-use for a continuous period of three years. |
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2. |
Issues |
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(1) |
Whether the trademark use is deemed effective if there is a fact objectively showing the sales of products bearing the trademark in Taiwan no matter who sells the products? |
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(2) |
Whether the trademark license is valid if the trademark owner only makes a distribution agreement with a third party verbally based on mutual trust? |
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3. |
IP Court’s viewpoints |
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(1) |
It can be accepted as evidence of use when the trademark owner or the licensee has the subjective intention of marketing its goods or services in Taiwan and such use is sufficient to be considered to have put the registered trademark to genuine use in the course of trade and to enable relevant consumers to recognize the trademark as such.
The Plaintiff has made verbal distribution agreement with a third party (A company) from May 1989 and the Plaintiff further submitted invoices to prove the sales of products bearing the trademark at issue. Therefore, the trademark at issue was considered to be in use in Taiwan.
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(2) |
Recordal of license is not mandatory in Taiwan. Moreover, based on the principle of freedom of contract, a contract is not necessarily made in writing. Verbal agreements and correspondence between two parties from which the facts of license can be learnt are sufficient to prove that both parties have reached an agreement on trademark license. The recording is not the validity factor of a trademark license contract. As long as the trademark owner and the licensee reach an agreement, the trademark license is valid. |
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4. |
Best reminder: |
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By means of trademark license, it is not only possible to expand the marketing channel of goods, to enhance the market share, but also to obtain substantial royalty. Thus, the trademark license agreement should be cautiously engaged. We strongly recommend that all trademark license contracts are made in writing though a trademark license contract is not required to be in writing. In this way, the written contract can be the direct evidence of the existence of the license without the need to submit other documents to connect the evidence to the fact. In addition, it will ensure the legitimate rights and interests of trademark owners by signing a trademark license contract to stipulate the important conditions, such as licensing scope, licensee's prohibition of registering the licensed mark and licensing date, etc. |
