Newsletter
PROPOSED AMENDMENTS TO TRADEMARK AND FAIR TRADE ACTS
The proposed amendments to the FTA will eliminate the provisions for the protection of trademarks, so that trademark infringement is-sues will in future be regulated entirely by the Trademark Act. In coordination with this change, the IPO is drafting amendments to the Trade-mark Act to include protection for famous marks that are not registered in Taiwan. If the amendments are passed by the legislature, fa-mous marks will be protected under the Trade-mark Act whether they are registered in Taiwan or not. This is in line with international trends in IPR protection.
In the existing regime, there is an overlap be-tween the provisions of the FTA and Trademark Act. The conflict between the two statutes has become more acute since the 2003 amendments to the Trademark Act, creating difficulties in both the interpretation and the application of the law. In order to resolve disputes created by such overlap, amendments to the FTA and the Trademark Act have been proposed.
Thus, in the future, the protection of famous trademarks, whether or not they are registered in Taiwan, will be incorporated into the Trademark Act. Additional protection under the FTA will only extend to plagiarism of famous symbols or markings that are not the subject of trademark protection, but are sufficient to identify the source of goods or services.
However, if the proposed amendments are en-acted in their present form, in practice this will seriously impact the protection available to trademark owners. For example, under the pro-visions of the current Trademark Act, if a regis-tered trademark is used by another entity as its company name or Internet domain name, the name used must be entirely identical with the registered mark for an infringement to occur. If the name is merely similar to the registered mark, such use does not violate the Trademark Act, so that it is necessary to seek protection under the current FTA.
Also, as currently drafted, the provisions of the proposed amendments to the Trademark Act defining infringement of an unregistered famous mark prohibit the use of such a mark as a trademark, but not as a company name, trade name, or domain name. This has produced criticism. We will continue to follow develop-ments and keep readers informed.