APAA TRADEMARK COMMITTE

TAIWAN GROUP SUMMARY REPORT 2007

Frank Liu

I. The Development of Taiwan’s Trademark Practice in the Year of 2007

1.1  Guidelines Related to the Examination of Certification Marks, Collective Marks, and Collective TrademarksMark promulgated on July 25, 2007.

The Trademark Office promulgated the Guidelines related to the examination of certification marks, collective marks and collective trademarks on July 25, 2007. There are two types of certification mark, namely, (1) certification marks that certify that the goods or services meet certain standards in relation to quality, materials, mode of manufacture or performance of service, quality, accuracy or other characteristics and (2) certification marks that certify that goods or services originate in a specific geographic region, and two types of collective trademark, namely (1) collective trademarks that are used, or intended to be used, in commerce, by the members of a unioncooperative, an association, or other collective group or organization, and (2) collective trademarks that are the name of a region indicated by the geographic indication, or any other visual signs capable of indicating that a specific item of goods originates in that region. Collective marks are used, or intended to be used to identify the membership of a union, association or other organization.

1.2  Legislative Yuan Paves Way for Start of IP Court

The Legislative Yuan passed the “Intellectual Property Case Proceeding ActApplication Examination Law” and the “Intellectual Property Court Organiczation ActLaw” respectively in January and March of 2007, and the laws will take effect by decree of the Judicial Yuan.

According to the provisions of the “Intellectual Property Court Organic zationAct Law”, the IP Court will have jurisdiction over: civil cases relating to IP disputes of the first and second instances; criminal cases of appeal or interlocutory appeal filed in dissatisfaction with the rulings of district courts in the first instance; and administrative litigation cases of the first instance. The “Intellectual Property Case Proceeding ActApplication Examination Law” stipulates that, where a concerned party institutes an invalidation proceeding as a counterclaim in an infringement case, the IP court shall be empowered have the discretion to determine whether such a counterclaim is well-grounded.

1.3 Court Fees Payable after August 15, 2007 for Administrative Litigation Cases.

II. Case Review

2.1 Company Ordered to Change Name Based on the Fair Trade Act

The Kaohsiung District Court of Taiwan rendered a final decision in April of 2007 on a dispute between the World Trade Centers Association, Inc. (WTCA) and Kaohsiung World Trade Center Co., Ltd. (KWTC), a local company. . The Court held tha In said case, KWTC’s use of “World Trade Center” and its Chinese equivalents as part of its company name was held by the Court to be held by the Court to be a deceptive or obviously unfair action that would affect trade order, hence the violation of, which is against Article 24 of the Fair Trade Act. The Court said that, although the the trademark registration owned by WTCA in Taiwan is the Chinese equivalents for “Taipei World Trade Center,” the three wordsname “World Trade Center” contained in the mark areis sufficiently distinctive to be a source identifier. The Court indicated that KWTC’s use of “World Trade Center” as part of its company name would mislead the public to think that KWTC is affiliated with WTCA and would therefore engender marketplace confusion. KWTC was accordingly ordered to stop using “World Trade Center” and its Chinese equivalents as part of its company name and to change its Chinese company name registered with the authorities. The Court’s reliance upon the Fair Trade Act to prohibit a company from using its a company name in Taiwan is a rare instance. [

2.2 Legal Construction by the Administrative Court of “Dilution ofe the Reputation or Distinctiveness of a Well-Known Mark”

As a result of the revision on November 28, 2003, the Trademark Act embraces the legal doctrine of dilution. A decision rendered by the Administrative Court in March of 2007 shed light on how the doctrine of dilution applies. The Court held that only if a higher degree of similarity exists between the marks concerned and if the based-upon mark is one whose reputation has been established among general consumers, not related consumers, would the issue raise as to whether or not the reputation or distinctiveness of the based-upon might be subject to dilution. Obviously, the Court adopted very stringent criteria in examining trademark similarity and the reputation of the based-upon mark.

2.3 Evidence of Use on the Internet is not Sufficient to Defeat a Non-Use Cancellation Action in Taiwan

The mark "MK (stylized) Restaurants" (in color) registered by MK Restaurants Co., Ltd. (a Thai company) in Class 42 in relation to restaurants encountered a non-use cancellation. With regard to the registrant's claim of continued use of the mark MK restaurants on its website, the Trademark Office and the Board of Appeals (BOA) commented that the web offer not written in Chinese was not deemed to constitute marketing that specifically targeted Taiwanese consumers.

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