Power of attorney is required case by case, say chief justices

Taiwan

The chief justices of Taiwan's Supreme Administrative Court have issued a resolution which provides that an agent, acting on behalf of a trademark owner who has no domicile or place of business in Taiwan, must submit the power of attorney which gives the agent its authority to act on behalf of that party, each time a trademark-related case is brought before the courts.

This is a significant departure from prior practice, as the Intellectual Property Office (IPO) used to accept a photocopy of the general power of attorney each time a new trademark case was brought before the courts, as long as the original had been submitted in a previous case.

This decision was prompted by a case that was appealed to the Supreme Administrative Court early last year. In Shiners Zone Enterprise Co Ltd v Intellectual Property Office (91-Pan-832), Giuliana Camerino, who trades under the name Roberta di Camerino, had her agent bring an action for cancellation before the IPO. She alleged that her mark, ROBERTA DI CAMERINO, had been infringed when Shiners Zone Enterprise registered the mark ROBERTA BALDINI in relation to the same goods. The IPO held in Camerino's favour, finding that Shiners' mark would confuse consumers as to the origin of the goods.

Shiners appealed to the High Administrative Court, but this court too found for Camerino.

On appeal again, this time to the Supreme Administrative Court, the court held that although Shiners' mark was in conflict with Camerino's mark, the case had to be remanded to the court of first instance on a procedural point. The appellate court said that, pursuant to Taiwan's Trademark Law, Camerino's agent should have submitted the power of attorney giving it the authority to act on her behalf when the claim for cancellation was filed. The fact that the power of attorney had been submitted in relation to an earlier dispute involving Camerino was irrelevant; the power of attorney must be submitted to the IPO on a case-by-case basis. Thus, ruled the court, before Camerino's claim is even entertained, it must be established that the agent has the authority to act on her behalf.

Several months after this decision was handed down, a joint meeting of the chief justices was held with the aim of clarifying this issue. The result of that meeting was the justices' new resolution requiring the submission of the power of attorney on a case-by-case basis.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei

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