Region: Taiwan

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.

26 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”.

19 May 2022

Supreme Administrative Court considers effect of shifting class categories on scope of protection

The court ruled that trademark owners shall not be at fault in non-use revocation actions when the TIPO has changed its interpretation of the goods/services classification.

12 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.

07 April 2022

Supreme Administrative Court decision highlights requirements and interpretation of anti-squatting and bad-faith clause

A prior right owner may demonstrate an applicant’s bad faith under Article 30(I)(12) of the Trademark Act if the two parties are competitors in the same industry or are engaged in related fields, even if they have no direct business relationship.

21 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.

13 January 2022

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.

02 December 2021

IP Court decision highlights evidence of use required to defend against non-use cancellation action

This decision of Taiwan’s IP Court demonstrates what type of evidence is required to prove trademark use when the mark at issue is used on a website that does not have a ‘.tw’ top-level domain.

09 November 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.

29 September 2021

Supreme Administrative Court provides primer for determining similarity of goods and services

In these opposition proceedings involving the marks SIMFY and SOMFY, Taiwan’s Supreme Administrative Court rebuked the IP Court for failing to take into consideration all relevant factors when determining the similarity of the goods and services.

23 August 2021