Revised Examination Criteria on Likelihood of Confusion Announced on TIPO Website

[ March 2022 ] >Back
I. Revised Examination Criteria on Likelihood of Confusion Announced on TIPO Website
Referring to the examination guidelines of the EUIPO, JPO, the USPTO, and the judicial practice of Taiwan, TIPO has revised the Examination Criteria on Likelihood of Confusion in order to provide trademark examiners with more specific guidelines on the evaluation of the likelihood of confusion when examining trademark applications. It was published and entered into effect on October 27, 2021.
1. The Similarity of Trademarks:
  The revision has instituted the principles for the evaluation of the degree of distinctiveness of trademark elements, assessment of each trademark as a whole, facilitation of comparisons between individual parts of compound word marks, and judgment of the similarity between existing words/phrases and phonetic characters, and largely provide with examples.
2. The Similarity of Goods and Services:
  A new criterion “channels of distribution or points of sale” was added in the list of determining factors for the degree of similarities between goods and services. The definitions of goods/services that are considered in competition, complementary, or auxiliary/ancillary in relation to specific other goods or services. Furthermore, there were supplemental information concerning the relationships between the goods and their components, raw materials, or semi-finished products, respectively, in the revision. The examples and applicable situations of aforesaid factors were mentioned therein.
3. Other Minor Changes:
  Some determining factors were altered, such as whether the trademark applicant possesses a bona fide intent, whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, and the qualifying factors for being "obviously improper," part of the proviso of Subparagraph 10, Paragraph 1, Article 30 of the Trademark Act.
Publication Date : 2021-12-23

I. Introduction to the license recordation system of intellectual property rights in Taiwan
The law divides the license of intellectual property rights into "exclusive license" and "non-exclusive license" in Taiwan.
Exclusive license" is completely monopolized, and even the licensor is excluded from the scope of exercise (Article 62(3) of the Patent Act, Article 39(5) of the Trademark Act, and Article 37(4) of the Copyright Act). Only the exclusive licensee can exercise the intellectual property right, and also license others to implement it. When the rights are infringed, the exclusive licensee can also file a lawsuit in his own name.
Non-exclusive license” is not monopolized. The licenser can exercise the rights himself or license others to do so. Non-exclusive licensees have only the right of use, not the right of exclusivity. In principle, the right to use cannot be transferred to a third party for exercise (Article 63(2) of the Patent Act, Article 40(2) of the Trademark Act, and Article 37(3) of the Copyright Act). Because the non-exclusive license has no right of exclusivity, even if a third party infringes the intellectual property right, the non-exclusive licensee cannot file a lawsuit in his own name.
"Sole license" is another common type of license in the market, but there is no provision about "sole license" in the Act. Thus, it refers to the basic principle of Civil Law: Article 98 “ In the interpretation of an expression of intent, the real intention of the parties must be sought rather than the literal meaning of the words.
Generally, people hold the opinion that the literal meaning of "sole license" implies "the licensor shall not sub-license to a third party". Therefore, in principle, a “sole license” could belong to a non-exclusive license, so the licensor of sole license can exercise the rights himself, but cannot license a third party to exercise it.
Any changes in trademark and patent rights are subject to the stipulation that "It should not be a valid defense against any third party, unless it has been registered with the Authority  concerned." (Article 62(1) of the Patent Act, Articles 39(2),42 and 44(1) of the Trademark Act). This is called "the doctrine of registration antagonism”. An unregistered contract of license only has the effect of creditor's rights and can only be used against a party  to a contract. If the licenser transfers the rights to a third party, and the third party later refuses to recognize the license contract, the licensee can only claim damages from the original licenser. The registered contract of license is effective against a third party, and the assignee of the right must accept the license contract (Article 62(2) of the Patent Act, Article 39(3) of the Trademark Act) .
It is noteworthy that the majority of the TIPO and the Court hold the opinion that the legislative purpose of the system of registration antagonism consists in protecting the transaction order, so a "third party" here is limited to the third party who conducts the transaction, excluding infringers. However, even if the license contract is not registered, the exclusive licensee can still file a lawsuit against the infringer, and the infringer cannot use "the exclusive license is not registered" as a defense. On the other hand, for a non-exclusive licensee, it has nothing to do with whether it is registered or not because a non-exclusive licensee cannot file a lawsuit in his own name.
Unlike patent rights and trademark rights, the Copyright Act in Taiwan adopts the principle of creation protection. The author of a work shall enjoy copyright upon completion of the work. It does not need to be registered. Under this premise, the license of copyright is not applicable to the doctrine of registration antagonism. In order to solve the issue of whether a contract of copyright license can be against a third party, the Article 37(2) of the Copyright Act stipulates that "The license referred to in the preceding paragraph shall not be affected by subsequent assignment or further licensing of economic rights by the economic rights holder." That is, after the economic rights of copyright are assigned or exclusively licensed to a third party, the third party must bear the previous license contract and cannot prohibit the previous licensee from exercising the rights. If the owner of the economic rights copyright fails to inform the third party of the existence of the prior license contract during the transaction, it may constitute a breach of contract and cause the compensation of damages. However, such legislation greatly increases the uncertainty of the transaction of the economic rights since the third party has no way to know the license status of the economic rights before the transaction, but must accept all the license contracts in general.



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