In our latest round-up, we look at Mauritius considering introducing the international exhaustion of trademark rights, 6,000 counterfeit products seized in China, Conor McGregor’s latest trademark fight, and much more.
Producing excellent work consistently can’t be achieved by simply hiring impeccable talent. WTR spoke to Winkler Partners' Mark McVicar about what it takes to be an effective team leader and the keys to finding and refining junior talents.
We highlight the areas that reportedly engage in the trade of counterfeit goods in Taiwan. An expert in the region provides insights on the different types of retail environment that most often house fake goods in the East Asian state.
A recent judgment from Taiwan’s IP Appellate Court provides welcome clarification on the protection of well-known trademarks containing words that may otherwise be deemed to lack distinctiveness. Read more
Taiwan’s IP Court has upheld a refusal to register the mark BALLDRIVE for goods in Class 7. The decision shows that a mark may be considered descriptive even when it has been coined by the applicant. Read more
A major amendment to the regulations governing customs border measures will be key in the protection of trademarks. The measures allow the owner of a trademark to apply to have it recorded on Customs' database, enabling Customs to seize counterfeits when it inspects imported or exported goods <i>ex officio</i>.
The IP Court has awarded record damages of NT$256.3 million to Hermès International against an infringer who sold counterfeit Hermès bags. The infringer had already been sentenced to three months' imprisonment and must now pay damages in the civil suit, as well as paying for publication of the judgment in two local newspapers.
The Office of the US Trade Representative has announced that it has removed Taiwan from the Special 301 Priority Watch List and placed it instead on the Watch List. The move reflects the Taiwanese government's substantial efforts to increase IP protection, including the proposed creation of specialized IP courts.
Tea farmers associations in Taiwan have announced plans to register the geographical indications Alishan and Ali Mountain as trademarks in China. It is hoped that registration, coupled with changes to the packaging of tea from the Alishan region, will help to deter counterfeiters in China.
A recent judgment handed down by the Taiwan IP Court has highlighted how rights holders must act quickly if they believe their trademarks are being infringed – or risk losing their ability to claim compensation.
Foxconn’s $3.5 billion acquisition of a majority stake in Sharp, which was completed last month, marked what is presumably the largest foreign takeover of a Japanese company yet. And with the Taiwanese outfit’s installation of one of its own team as CEO, Sharp’s brand strategy appears to be heading in a new direction.
Preliminary statistics published by the Taiwan IP Office reveal 2016 to have been its busiest year from a trademarks standpoint since 2011, with growth recorded in applications, and registrations. Corresponding with this rise, rejections also rose significantly.
The appellate court of the Intellectual Property Court has ruled in favour of Red Bull AG in a trademark infringement case involving the use of RED BULL and related marks by a local company, Ding Oil International Trading Company, for goods in Classes 1 and 4. The court further ruled that Ding Oil and its legal representative were jointly liable for damages.
Following revisions effective as of February 6 2015, the Fair Trade Act no longer protects trademarks duly registered in Taiwan under the Trademark Act, but will grant protection only to famous trademarks or trade dress not registered in the country. Previously, famous trademarks - whether or not registered in Taiwan - could be protected under the Fair Trade Act.
The Intellectual Property Court has ruled in favour of Intel in a trademark infringement action involving the use of EDIXEON and EDIXEON INSIDE by Edison Opto Corp, a local manufacturer of LED products. Among other things, the court held that, since Intel's XEON mark is famous among the relevant consumers, the defendant's use of EDIXEON and EDIXEON INSIDE could dilute the highly distinctive character of the XEON mark.
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. Among other things, 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.
In a story which has gained traction in Chinese language media, a homemade soap company has raised an outcry over the fact that the Taiwan Intellectual Property Office (TIPO) has rejected its application for a trademark which translates roughly to ‘soap picker’. TIPO reportedly reached the decision because the proposed mark “refers to gay sex” and was “detrimental to public morals”. However, one commentator argues that the decision is more nuanced. Read more
The Intellectual Property Court has rendered a decision in favour of plaintiff Solutia Singapore Pte Ltd, the owner of the famous V-KOOL mark for window film, in a trademark infringement case involving the use of the term 'V-KOOL' as a trademark, domain name and company name.
The Intellectual Property Court has ruled in favour of Google in a trademark infringement case involving the use of trademarks as keywords. Among other things, the court recalled that use of a sign merely to describe goods or services does not meet the requirements for use as a trademark under the law.
The Taiwan Network Information Centre has announced that it will work with Neulevel to promote the registration of '.tw' domain names outside Taiwan and China. The move follows a relaxation of registration requirements that allows foreign entities to register domain names using the appropriate '.tw' extension.
In <i>GA Modefine SA v Tai-Shin Management Consulting Co Ltd</i>, a panellist from the Science and Technology Law Centre of the Institute for Information Industry has ordered the transfer of 'armani.com.tw' to the complainant - the owner of the ARMANI mark. The panellist held that the registrant had no legitimate rights in the domain name, and had registered and used it in bad faith.
Following a long-running dispute, the IP Court in Taiwan has rendered a decision for a cancellation action initiated by local company Zong Hwa Industrial Co Ltd against Kyarra Inspires Incorporated due to possible confusion.
Trademark rights in Taiwan are governed by the Trademark Act and the Enforcement Rules of the Trademark Act. The competent authority for the application and registration of trademarks is the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs.
In two non-use revocation actions against two VALENTINO marks, the Intellectual Property Court has recognised that the use of trademarks on gifts could constitute trademark use. The court found that, although Valentino SpA had not sold any perfume bearing the VALENTINO trademarks prior to 2008, it had provided perfumes as gifts when consumers purchased other VALENTINO-branded goods.
In order to clarify the terms "contrary to public policy or accepted principles of morality" in Article 30, Paragraph 1, Item 7 of the Trademark Act, the Taiwan Intellectual Property Office has issued the “Examination Guidelines for Trademarks Contrary to Public Order or Good Morals” as a reference for reviewing such trademarks. The guidelines took effect on May 11 2015.
In a case regarding the use of trademarks similar to earlier registered trademarks, the Intellectual Property Court has dismissed the plaintiff's claim of trademark infringement, but ordered the defendants to add distinguishing features to their products. Among other things, the court held that the use of the disputed trademarks by the defendants was in good faith, based on the creation and history of the marks in another country.
The IP Court has ruled in favour of BabyBoss City Limited in a dispute with Hugo Boss over the figurative mark BABYBOSS. The court was not convinced that there would be likelihood of confusion among consumers as to the source of the goods. The judgment is significant because, three months earlier, a different tribunal of the same court had found that there was a likelihood of confusion between the word mark BABYBOSS and Hugo Boss’s marks.
The Supreme Administrative Court has upheld a decision of the Intellectual Property Court finding that Shen's Glory Inc’s leopard device for goods in Class 12 was confusingly similar to British car manufacturer Jaguar's earlier registered jaguar device. Among other things, the lower court had found that consumers were likely to believe that goods bearing the marks came from the same source.
The Intellectual Property Office has promulgated the Examination Guidelines on Non-conventional Trademarks, based on the original Examination Guidelines on Three-Dimensional, Colour and Sound Trademarks. The new guidelines outline the definition and examination procedures for non-conventional trademarks (ie, three-dimensional, colour, sound, motion, hologram, position, scent, tactile and taste trademarks).