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Trademark |
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I.The “Fast Track” system has been implemented and applied to new trademark applications filed on and after May 1, 2020 |
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To encourage the applicants to use the e-filing system to apply for new trademark applications and to speed up the trademark examination, Taiwan Intellectual Property Office (“TIPO”) has introduced the “Fast Track” system. After paying the official filing fee, all new trademark applications which are filed on and after May 1, 2020 and meet the following conditions will be examined two months earlier than others. |
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1. |
The trademark application is filed through the e-filing system. |
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The system can only be applied to a two-dimentional trademark, excluding non-traditional trademark, certification mark, collective membership mark, and collective trademark. |
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All of the designated goods and services must be completely identical to the standard descriptions listed by the TIPO. |
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The Official filing fees are paid through a designated bank account or an electronic payment sheet in printed form by the counter or via eATM. |
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A Power of Attorney should be submitted at the time of filing if there is a trademark attorney in power. |
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Trademark applications fulfilling the above conditions are considered already complying with all formality requirements. Thus, they will automatically enter the substantive examination earlier. The applicants do not have to file additional application form nor pay extra fee for entering into the system. TIPO expects that the applicants can receive the notice 1.5 months earlier than the average examination time as to whether the application is allowed to be registered. In this way, the applicants can speed up their use of the trademark to expand the business and layout.
Nevertheless, the "first-to-file" principle still applies here. That is, the applications which arrive at TIPO first will still be registered first, thus expelling latecomers.
Trademark applications that meet the conditions of the “Fast Track” system will be indicated as “Fast Track-case” in the detailed form of the TIPO’s database in circa one month after the filing. Also, the status of the case will be shown as well.
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Source: https://www.tipo.gov.tw/tw/cp-85-803408-0ff13-1.html |
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II.Jaw-Hwa’s Trademark Review: Up-to-date Case on Parallel Imports |
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Recently, a judgment issued by the Supreme Court raised a new viewpoint on "parallel importation of goods and the exhaustion of trademark rights", and the case was remanded to the second-instance court, the Intellectual Property Court, for retrial. The summary of the case and our relevant comments are shown as follows. |
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1. |
Summary of the case (Civil Judgment of Supreme Court 2019 Tai-Shang-Tzu 397): |
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The plaintiff A purchased the product X from the original company P in the United States (the trademark of the product is PHILIP B) and shipped the product to Taiwan. A then sold the parallel import, product X, on Taiwan’s various online platforms, while the Taiwanese company B obtained the authorization from the original company P and registered PHILIP B trademark in Taiwan. Thus, the company B requested A removing all the goods that were sold on all the platforms, and A filed the lawsuit. |
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Issues of this case: Parallel Imports; Exhaustion of Rights |
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(1). |
Parallel imports are often referred to as grey products in the market. They are original products and are not counterfeit. The importer buys the original products through other channels at a cheaper price, and then transports them to the domestic market to earn a spread. |
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(2). |
The parallel import is legal based on the Trademark Act Article 36.II, “Where goods have been put on the domestic or foreign market under a registered trademark by the proprietor or with his consent, the proprietor is not entitled to claim trademark rights on such goods.” That is, the trademark owner has received the compensation for the first sales of the trademarked products that were sold in domestic or foreign market, and thus the trademark right has been exhausted during the first sales of the product. When the trademarked products are put on the market again, the trademark owner is no longer to claim the trademark rights in principle. |
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In the first instance (2016 Min-Shang-Su-14) and the second instance (2016 Min-Shang-San-Zi-14), both judgments held that: |
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(1). |
Although the products sold by A were purchased from the original company P in the United States, they were sold in Taiwan. The trademark owner in Taiwan was B, and the trademark owner in the United States was the original company P. Therefore, different trademark ownerships do not fall under the conditions of the regulation and the rights should not be considered to be exhausted. |
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(2). |
The courts of the first and second instances held that the trademark owner in Taiwan is different from that in the United States. The sale of products in Taiwan does not comply with the principle of exhaustion of rights. Therefore, it is necessary to re-examine whether the products X sold in Taiwan have obtained B’s consent or authorization. Obviously, such sales in Taiwan did not obtain authorization from B. The judgment determined that A had infringed B’s trademark rights and dismissed A’s request in the lawsuit. |
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The Supreme Court’s opinions: |
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The Supreme Court deems that the trademark owner of the "PHILIP B" trademark in Taiwan is B, and the trademark owner in the United States is P. Although the trademark owner is different, the reason why B can register the trademark in Taiwan is that they obtain P’s consent and authorization. Hence, the "PHILIP B" trademark right originates from the same right-holder P. The Supreme Court held that P has received compensation for selling products to A in the United States (first sale), and if it requires B’s consent for A to sell the products in Taiwan (second sale), P would have been paid twice under this circumstance. It seems to be against the purpose of exhaustion of rights. |
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The Supreme Court revoked the previous judgments, questioning the IPC’s reasoning on whether the exhaustion of rights applies to B. In other words, whether the trademark owner B in Taiwan can claim that A infringes their trademark rights |
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Jaw-Hwa’s comments: |
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(1). |
In principle, there will be no such issue as long as the product is genuine in general Parallel input discussion. However, this is based on the premise that the trademark owner is the same. For example, when the product is purchased from the United States and then imported into Taiwan for sale, if the owner of the trademarks in the United States and Taiwan is the same, there will be no conflict. |
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(2). |
However, the situation is different in this case. The U.S. trademark owner is P whereas the Taiwan trademark owner is the authorized agent B. The trademark owners are different, so the conflict arises. |
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(3). |
If the opinion of the Supreme Court is adopted, there will be undoubtedly a big impact on the agency. It takes a lot of costs for a company to obtain the domestic agency, but they cannot claim the right to the parallel importer, which will reduce the willingness of companies to strive for an agency. Agencies can ensure product warranty and maintenance so that consumers can send products for repair or return with confidence, but parallel importers may not provide such services, which will have a certain impact on consumers. As the case is still pending and has not been determined, we will keep following up on the further developments. |
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P.S. If the US trademark owner P of the product and the trademark owner B in Taiwan have no authorization or agency relationship but are two completely independent owners, there is no doublt that A ’s sale of the product in Taiwan is indeed infringing on B ’s trademark right. The exhaustion of rights cannot be applied to this circumstance. |
