Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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Taiwan

New 01 DECEMBER 2022

Taiwan's trademark certificates to go digital from January 2023

As part of ongoing efforts to reduce its environmental footprint and modernise its application process, TIPO is overhauling how it issues trademark and patent certificates from early next year.

20 OCTOBER 2022

Supreme Court rules against trademark squatting and abuse

A fresh case from the Taiwan Supreme Court addresses the issue of how one should defend against a trademark squatter in an infringement suit where the bad-faith registration has become incontestable and the mark at issue is not famous.

06 OCTOBER 2022

Ad featuring third-party mark on the aftermarket ruled fair use

Selling consumable spare parts bearing a third-party mark on the aftermarket has been held to be nominative fair use by the IPC Court, so long as it is clear that the item is not produced by the original manufacturer.

15 SEPTEMBER 2022

Taiwan IP Office updates examination guidelines for the digital age

New amendments by the Taiwanese IP Office to guidelines on distinctiveness gives brand owners a much greater scope of protection. The changes cover characters, foreign words and compound words, slogans, and shapes and devices of goods or services.

21 JULY 2022

Hashtags using trademarks deemed to be promotion, not infringement

The IPC Court has ruled that the use of another group’s registered trademarks as a hashtag on social media constitutes promotion and does not suggest sponsorship or endorsement, therefore is not likely to create confusion.

14 JULY 2022

Questions remain regarding the registration of trademarks in the metaverse

Nike is registering its marks in new classes to keep up with the evolving virtual trademark landscape, however it is unclear if and how Taiwan’s IP system will adapt to protect IP rights in the metaverse.

09 JUNE 2022

Amazon Technologies loses out on distinction between suggestive or descriptive

The IP and Commercial Court has upheld the Taiwan IP Office’s rejection of Amazon Technologies’ mark – an invented word that is simply the combination of two dictionary words – finding it descriptive rather than suggestive.

26 MAY 2022

Draft amendment of the Trademark Act sets outs big system overhaul

A raft of suggested changes to the current Trademark Act could have a big impact on the IP landscape for many years to come. In particular, the draft amendments propose establishing a new committee that would be responsible for reviewing all formally rejected cases and examining invalidation and cancellation actions.

19 MAY 2022

Bait-and-switch SEO technique exploits brands and violates Fair Trade Act

An online retail platform manipulating internet search algorithms to drive traffic to its website has been found to violate the Fair Trade Act and to be “taking a free ride on the competitor’s business efforts”.

07 APRIL 2022

Case exposes vulnerability of marks registered prior to class category changes

The Supreme Administrative Court has found in a rights holder’s favour in a case involving shifting class categories. However, rulings in this area are inconsistent and IP owners should take steps to shore up their marks.

13 JANUARY 2022

The relationship between retail services and identified goods on trademark applications

The emergence of e-commerce, in which a wide range of goods are readily accessible, is leading to increasing overlap between the sales channels and target consumers of goods or services designated by different marks.

02 DECEMBER 2021

How pandemic driven non-use could affect trademark cancellations

Covid-19 lockdowns have forced some businesses to stop using their trademarks. While there is no word from Taiwan’s government on how this may affect non-use cancellations, owners can take pre-emptive steps to keep their marks valid.

29 SEPTEMBER 2021

IPC Court questions whether advertising services provided outside Taiwan qualifies as trademark use

In a case currently before the Supreme Administrative Court, a registered trademark that was advertised in Taiwan could be vulnerable to non-use cancellation in the absence of any actual business transaction. Such a finding could have far-reaching consequences for trademark owners that offer their services offered outside of Taiwan.

09 SEPTEMBER 2021

Non-profit trademark use upheld by Taiwan Supreme Court

The Supreme Administrative Court has held that trademark use is not conditioned on for-profit activities after a dispute between two dental associations was reviewed by the IP & Commercial Court.

19 AUGUST 2021

IP Court addresses who can benefit from prior-use defence

A recent case from the IP Court provides new guidance on the unclear language in Taiwan’s Trademark Act with regard to the prior-use defence and who can benefit from it.

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