Newsletter
NEW TRADEMARK ACT APPLIES TO PREVIOUSLY REGISTERED COMPANY NAMES
Article 62 of the amended Trademark Act, which took effect on 28 November 2003, provides that a famous mark is deemed to be infringed if an-other person knowingly uses text from the fa-mous mark as the name of their own company or firm without the trademark owner’s consent, in such a way as to dilute the distinctiveness of the famous mark or damage its reputation, or in such a way as to cause confusion among relevant consumers of goods or services. But the Act does not expressly state whether, under this provision, the owner of a famous mark may as-sert infringement against a name of a company or firm that was already registered before the amended Article 62 took effect. This issue has been highly controversial.
In a 2005 civil judgment, the Taiwan High Court held that Article 62 could be used against pre-viously registered names. Citing a 1998 civil appeal judgment of the Supreme Court, the Taiwan High Court stated that for the court to grant an injunctive relief, the infringement must be existing at the time of the lawsuit, or if the plaintiff alleged likelihood of infringement, the court must make a judgment as to the current degree of such likelihood. If an act of infringe-ment contemplated by the amended Article 67 continues after the entry into force of the amended Trademark Act, it falls within the pur-view of Article 67, and it follows that a trade-mark owner may ask the court to order the de-fendant to stop the infringement.