24 AUGUST 2023
Alternative methods to curb trademark squatting amid post-registration opposition abolition
A draft amendment to Taiwan’s Trademark Act is set to replace the post-registration opposition system with invalidation proceedings. It will introduce a trial and appeal board and will allow third parties to submit observations during the pre-registration examination process.
Authors:
Amanda Liu
13 JULY 2023
Amended good-faith prior use clause could threaten predictability in trademark suits
An amendment to Taiwan’s Trademark Law will muddy the scope of protection provided by good-faith prior use. This may make it more difficult for defendants to argue legitimate use of marks and for courts to assess infringement.
Authors:
Samuel Cheng
11 MAY 2023
Wide-ranging draft amendment looks set to reshape trademark landscape
The recently passed draft aims to modernise the Taiwanese trademark regime, shaking up pre-existing policies with regard to applications, reviews, oppositions, cancellations and Customs proceedings.
Authors:
Tony Chang
27 APRIL 2023
LVMH ruling establishes new interpretations of well-known marks and their protection
A decision from the Supreme Administrative Court’s Grand Chamber lowers the levels of consumer and industry awareness needed to prove a mark’s well-known status and receive requisite protections.
Authors:
Amanda Liu
23 FEBRUARY 2023
IPC court revokes trademark registration over generalness
A recent ruling highlights the perils of a previously approved trademark shifting from distinctive to generic through common, third-party usage.
Authors:
Amanda Liu
15 DECEMBER 2022
Trademarks in Taiwan incorporating geographical indications face two-fold challenge
A recent SAC ruling has poured cold water on the use of geographical names in Taiwanese trademarks. Future applicants may need to work much harder to prove that their marks are distinct and avoid misdescription - throwing the popular use of such trademarks into question.
Authors:
Samuel Cheng
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.
Authors:
Tony Tung-Yang Chang
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.
Authors:
Tony Chang
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.
Authors:
Julia Hung
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.
Authors:
Amanda Liu
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.
Authors:
Amanda Liu
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.
Authors:
Amanda Liu and Tony Chang
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.
Authors:
Amanda Liu and Tony Chang
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.
Authors:
Julia Hung
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”.
Authors:
Bob Hung and Tony Tung-Yang Chang
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.
Authors:
Samuel Cheng and Tony Chang
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.
Authors:
Julia Hung
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.
Authors:
Tony Chang and Samuel Cheng
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.
Authors:
Julia Hung
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.
Authors:
Tony Chang
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.
Authors:
Tony Chang
