Amendment to Trademark Act to enter into force
The amendment to the Taiwan Trademark Act 2003 was promulgated by presidential order on June 29 2011 and will enter into force on July 1 2012.
The main features of the amendment are as follows:
- The types of protectable trademarks have been extended;
- The various modes of trademark use have been specified;
- Priority rights may be based on the exhibition of the goods/services;
- The payment of the registration fee by instalments has been abolished;
- The reinstatement of a registration is possible after a failure to pay the registration fee in time;
- A waiver of citation by letter of consent may not be possible in some cases;
- Proof of trademark use is required to obtain the cancellation of another party's registration;
- New provisions regarding trademark infringement have been introduced;
- There are new border control measures; and
- New provisions on geographical certifications and collective marks have been introduced.
The amendment will affect current practice in several respects, but this article focuses on the new provisions regarding trademark infringement. To harmonise inconsistent viewpoints in juridical practice, the amendment clearly specifies that a claim for damages can be made only when the infringer had a subjective intent to commit the infringing act, either intentionally or negligently.
To strengthen the protection of well-known trademarks, the amendment states that there will be trademark infringement if there is a "likelihood of dilution" of the distinctiveness or reputation of a well-known trademark, as opposed to the requirement of "actual dilution" under the current act.
In addition to acts of direct infringement (eg, use of an infringing mark on goods for sale in the marketplace), the amendment also provides that auxiliary acts - such as the manufacture, import or export of labels, tags and packaging bearing an infringing trademark - may constitute trademark infringement.
Further, the amendment abolishes the minimum statutory compensation (ie, 500 times the unit retail price of the infringing goods), so that the courts may exercise their discretion in each case. Additionally, to release trademark owners of the burden of establishing a claim for damages, an amount corresponding to a licence royalty payment may be used as the basis for such a claim.
Finally, the amendment states that the act of knowingly displaying or selling infringing products through electronic media or the internet constitutes trademark infringement, for which the infringer may be subject to criminal liability.
Joseph S Yang, Lee and Li, Taipei
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