TIPO issues guidance on use of trademarks on GPS maps

Taiwan
The Intellectual Property Office of Taiwan (TIPO) has issued guidance on the use of trademarks on Global Positioning System (GPS) maps.

It is common practice for electronic map manufacturers to use businesses' trademarks to indicate their location on GPS maps. However, the question of whether such use - where the consent of the trademark owner has not been obtained - is deemed to infringe the relevant trademark remains controversial.

As explained in the TIPO letter, if an electronic map manufacturer uses a registered trademark to indicate or describe the position of the trademark owner's place of business, such use describes the goods or service provided by the trademark owner, thus informing potential consumers of the whereabouts of the trademark owner's place of business. Such use is considered 'fair use' under Article 30-1(1) of the Trademark Act, rather than 'trademark use' under Article 6 of the act.

According to Article 6, 'trademark use' is the use of a trademark for marketing purposes - either on, or in conjunction with, goods, services or other relevant articles, or in two-dimensional graphic form, digital audio or visual form, or by way of electronic media or other media - which is sufficient to enable the relevant consumers to recognise it as a trademark. As such, a trademark serves to identify the source of goods or services, and the use of a trademark should lead relevant consumers to recognise it as a sign that identifies the source of certain goods or services. If the purpose or method of using a trademark is in connection with describing goods or services, but cannot lead relevant consumers to recognise it as a sign that identifies the source of the goods or services, even though the wording included in the trademark is marked on the relevant goods or services, such marking is not deemed to be trademark use and is not subject to the trademark owner's rights.

As stipulated in Article 30-1(1) of the act, where any party uses, with bona fide intent and as fair use, his or her own name or title, or the name, shape, quality, function, place of origin or other descriptions of the goods or services, such use is not considered trademark use and is not subject to another party's trademark rights.

Ruey-Sen Tsai, Lee and Li Attorneys at Law, Taipei

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