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USE OF COMPANY NAME SIMI-LAR TO TRADEMARK VIOLATES TRADEMARK ACT
The question of whether using text similar to a registered trademark as a company name or an Internet domain name violates the Trademark Act, has been an important and highly contro-versial issue.
Article 62 Subparagraphs 1 and 2 of the Trade-mark Act provide that a person or entity shall be deemed to have infringed upon a trademark if (1) it knowingly uses a trademark identical or simi-lar to a famous registered trademark of another person or entity, or uses text from a famous mark as its own company name, trade name, Internet domain name, or other mark that identifies a business entity or source, in such a way as to dilute the distinctiveness of the famous mark or to damage its commercial reputation; or (2) it knowingly uses text from a trademark registered by another person or entity as its own company name, trade name, Internet domain name, or other mark that identifies a business entity or source, in such a way as to confuse relevant consumers of goods or services. In numerous court decisions to date, the references in Article 62 Subparagraphs 1 and 2 to infringement by the use of "text" from a trademark as a company name, trade name, domain name, or other mark, have been held to mean text entirely identical to the textual portion of the trademark. But it has remained a matter of dispute whether the use of text that is similar, but not identical, to the textual portion of a registered trademark, also infringes the trademark.
It is noteworthy in this regard that the Taipei District Court, in a 2004 judgment, made an or-der forbidding the defendant in the case to use text identical or similar to "七星 (qixing)" or "Seven Stars" as the distinctive portion of its company name in Chinese or English. The judgment stated that the use in a company name of text "similar" to that of a registered mark falls within the scope of the infringements defined by Article 62 Subparagraphs 1 and 2 of the Trade-mark Act. The court took the same view in a 2006 civil judgment, in which it ordered the de-fendant not to use text identical or similar to "黃金貓 (huangjin mao)" ("golden cat") as the dis-tinctive portion of the name of its pet supplies shop.