Region: Taiwan

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.

26 June 2012

'Knight riding a horse’ marks held to be confusingly similar

The Intellectual Property Court has upheld decisions of the Taiwan Intellectual Property Office and the Ministry of Economic Affairs finding that the trademark BAO MA in Chinese characters (and 'knight riding a horse' device), which covered goods in Class 18, was confusingly similar to an earlier trademark consisting of a 'knight riding a horse' device, also for goods in Class 18.

10 April 2012

SAC confirms that lingerie mark may dilute DARJEELING certification marks

The Supreme Administrative Court has dismissed Delta Lingerie's appeal against a decision of the Intellectual Property Court in which the latter had cancelled Delta's word mark DARJEELING for goods in Class 25. The lower court had found that the mark was likely to dilute the distinctiveness of the DARJEELING certification marks, which are owned by the Tea Board of India.

31 January 2012

Trademark holders beware - Trademark Act to change soon

The Legislative <i>Yuan</i> has passed an amendment to the Trademark Act, the first major revision of the act since 2003. Perhaps the most noteworthy provisions are those relating to the proof of use in invalidation or revocation actions. As such provisions will make trademark protection more difficult, mark owners should review the use status of their marks in Taiwan as soon as possible. The amendment is expected to become effective in July 2012.

25 November 2011

Common word held to be distinctive for Class 18 goods

The Intellectual Property Court has upheld decisions of the Taiwan Intellectual Property Office and the Ministry of Economic Affairs finding that the plaintiff's trademark HEAD PORTER (and design), which covers goods in Class 18, was confusingly similar to Porter International Co Ltd’s earlier trademarks PORTER (and design), which cover highly similar or identical goods.

04 October 2011

Examination Guidelines on Retail Services take effect

The Taiwan Intellectual Property Office has published the Examination Guidelines on Retail Services. Among other things, the guidelines aim to define the meaning, nature and categories of retail services, and to formulate principles for assessing similarity between retail services and other goods or services.

22 June 2011

Lingerie mark likely to dilute DARJEELING certification marks

The Intellectual Property Court has annulled a decision of the Ministry of Economic Affairs, holding that the registration for the word mark DARJEELING in Class 25 should be cancelled on the grounds that it was likely to dilute the distinctiveness of the DARJEELING certification marks.

13 June 2011

Calculation method for trademark fees amended

The Taiwan Intellectual Property Office has amended its regulations on trademark fees. Among other things, NT$3,000 (approximately $93) will continue to be charged for 20 items or fewer of the designated goods per class; however, if the number of the designated goods per class is more than 20, NT$200 (approximately $6) will be charged for each additional item.

08 April 2011

TIPO announces changes to trademark registration practice

The Taiwan Intellectual Property Office has announced two key innovations to the IP system. First, the TIPO stated that, if a trademark renewal application is filed more than six months before the expiration of the registration term, the application will be rejected. Second, Taiwan and China are now accepting each other's trademark priority claims.

28 March 2011

Mark including the word ‘Swiss’ held not to be misleading

The Supreme Administrative Court has reversed a decision of the Intellectual Property Court in which the latter had held that the figurative trademark K‧SWISS was likely to mislead the public into believing that goods bearing the mark came from Switzerland. The court concluded that consumers would associate the mark with US company K-Swiss.

23 March 2011

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