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Plain packaging fireworks, Facebook fishing for phishers, and Irish Whiskey in Taiwan: news digest

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.

23 Sep 2019

How to build the IP dream team: exclusive interview with Mark McVicar

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.

12 Aug 2019

Seven counterfeit hotspots you should know in Taiwan

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.

Latest

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30 Mar 2020

International IP, Indonesia IP, Taiwan IP and Russia Trademark Firm of the Year: Baker McKenzie

6 Aug 2019

TUTORABC v HITUTOR: Appeal Court sets out distinctiveness criteria

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

17 Oct 2018

BALLDRIVE decision highlights IP Court’s strict approach to assessing distinctiveness of word marks

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

26 Sep 2017

Taiwan approves major amendment to protect trademarks at the border

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>.

Anti-Counterfeiting

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21 May 2009

Hermès bags record infringement compensation

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.

17 Apr 2009

Hermès bags landmark ruling in Taiwan

A specialist IP court has handed Hermès the highest amount of damages ever awarded in a trademark infringement case in Taiwan.

15 Mar 2005

Taiwan leaves Special 301 Priority Watch List at long last

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.

2 Sep 2004

Taiwanese tea farmers get tough on counterfeiters

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.

Brand management

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2 May 2017

The clock may already be ticking for your trademark infringement claims in Taiwan

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.

2 Sep 2016

New CEO seeks to rein in trademark licensing as part of Sharp turnaround plan

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.

Enforcement and Litigation

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13 Feb 2017

Trademark applications in Taiwan hit six-year high; rejections also spike

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.

14 Sep 2015

Red Bull prevents use of RED BULL-related marks for industrial oils

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.

16 Apr 2015

Fair Trade Act no longer protects registered trademarks

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.

27 Jan 2015

Intel successful in trademark infringement action against LED products manufacturer

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.

Government/Policy

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26 Jun 2012

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. 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.

IP Offices

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4 Aug 2015

Obscenity or discrimination? Applicant decries rejection of SOAP PICKER mark in Taiwan

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

Online

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2 Apr 2014

Use of 'V-KOOL' as mark, domain name and company name held to constitute infringement

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.

25 Apr 2013

IP Court rules in favour of Google in keyword case

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.

10 Feb 2004

Taiwan NIC partners Neulevel to market '.tw' domain names

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.

10 Oct 2003

Owner of ARMANI mark awarded 'armani.com.tw'

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.

Portfolio Management

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23 Feb 2016

Cancellation action rendered against DADA mark

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.

18 Sep 2015

Taiwan

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.

22 Jun 2015

IP Court: use of trademarks on gifts may constitute trademark use

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.

17 Jun 2015

TIPO issues guidelines for examination of marks contrary to public order or morality

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.

Trademark law

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28 Jan 2014

Defendants found not guilty of infringement, but ordered to distinguish their goods

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.

4 Nov 2013

Hugo Boss defeated in BABYBOSS case

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.

6 Feb 2013

Leopard device for cars held to be confusingly similar to Jaguar's device mark

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.

28 Nov 2012

Examination guidelines on non-conventional trademarks take effect

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).

Twitter

04 Apr 2020

@WTRmagazine RT @MarksmenTweets: Live updates: IP offices implement measures in wake of #coronavirus crisis https://t.co/ZtaWYfQl7V by @WTRMagazine #ip… Read more

04 Apr 2020

@WTRmagazine RT @WebTMS: "Fame! I wanna live forever..." Academics reckon they can objectively measure brand recognition, a technique which could be app… Read more

04 Apr 2020

@WTRmagazine RT @SharonToerek: Coronavirus and fakes: brand owners warned of stark rise in online counterfeits and fraudulent ads | World Trademark Revi… Read more

04 Apr 2020

@WTRmagazine RT @trevorclittle: In the second part of a new series looking back through our archive of world-class trademark content, we present five pi… Read more

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Christopher Shen

Vice President

Beijing, China

NTD Intellectual Property Attorneys

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