Region: Taiwan

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.

27 January 2015

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.

02 April 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.

28 January 2014

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.

04 November 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.

25 April 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.

06 February 2013

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).

28 November 2012

Minimum statutory compensation for trademark infringement is abolished

The new Taiwan Trademark Act, which came into effect on July 1 2012, has abolished the minimum statutory compensation for trademark infringement (ie, 500 times the unit retail price of the infringing goods). The courts may now exercise their discretion on a case-by-case basis.

16 November 2012

Trademark Act's new enforcement rules take effect

On July 1 2012 the new Trademark Act became effective. To facilitate its enforcement, the Intellectual Property Office amended the Enforcement Rules of the Trademark Act, which also took effect on July 1 2012. Among other things, new provisions have been added specifying that, when filing a trademark application, the applicant may be ordered to provide a description of the trademark and trademark sample(s), if necessary.

12 November 2012

IP Court considers representation of foreign legal persons in trademark proceedings

In a trademark opposition case before the IP Court, the plaintiff argued that, since the intervenor was a foreign legal person and the signatory of the power of attorney was not that person's legal representative, the signatory had no right to execute the power of attorney on the legal person's behalf. The court decided that such disputes should be decided according to the laws of the legal person's home country.

28 September 2012

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