Newsletter
DIRECTIONS ON TRADEMARK USE ANNOUNCED
On 25 June 2008, the Intellectual Property Office announced its Directions on the Use of Registered Trademarks. The main points are as follows:
- "Use" of a trademark is defined as use that meets at least the following two criteria: (1) the user must subjectively have the aim of selling goods; and (2) the use must objectively be sufficient to cause relevant consumers to perceive the mark to be a trademark.
- If a trademark owner has licensed another to use its trademark, and there is evidence sufficient to show that the licensee has in fact used the trademark, such use can be deemed equivalent to legitimate use by the trademark owner, even if the license has not been recorded with the IPO.
- In principle, the trademark as used should match the trademark design as originally registered, in its entirety. But if there are minor differences between the mark as actually used and the mark as registered, such that most people would still consider the marks to be "the same," the use of such a mark can be regarded as use of the registered mark. "The same" means that although minor differences of form may exist between the trademark as actually used and the registered mark, the main distinctive characteristics of the registered mark have not been substantively altered, so that based on general social conventions and consumers' perceptions, the mark as used produces the same impression in consumers as the original registered trademark, such that they believe the two marks to be the same mark.
- Whether the display of a trademark on gift items constitutes "use" of the registered trademark depends on whether the user, in marking such items with the trademark, subjectively had the intention of genuinely using the trademark in commercial transactions for the purpose of marketing goods, and on whether objectively the result of such use of the mark is to cause relevant consumers to recognize it as a trademark used on goods sold by the user. Therefore if the gift items are used merely as an advertising and sales promotion tool, and the mark is not being used to promote the gift items themselves, and relevant consumers will not regard the mark as a trademark used to identify gift goods, then the mark should not be held to have been used on the gift goods.
- Factors for judging whether online use of a trademark is evidence of use of the registered mark in Taiwan: for example, if the mark is used on a Chinese-language website with the top-level domain name ".tw," in principle such use can be taken as evidence that the user has used the mark for the purpose of marketing goods or services in the Taiwanese market. But if the web address belongs to another country, then further evidence must be provided to show that the content of the web pages is for the purpose of marketing in the Taiwanese market, and is intended to attract consumers in Taiwan.
The following factors for consideration are also set out:
1. Whether consumers have indeed browsed the relevant web pages, or have purchased the trademark user's goods or received services provided by the trademark user, on the basis of information provided on the website.
2. Whether the trademark user provides after-sales activities (e.g., warranty or service) within Taiwan, has established commercial relationships with persons in Taiwan, or conducts other commercial activities within Taiwan.
3. Whether the trademark user indicates on the relevant web pages an address, telephone number, or other means of contact within Taiwan, such as to enable consumers to order goods directly from the trademark user.
4. Whether the goods or services supplied by the trademark user can be legitimately supplied within Taiwan, and whether the relevant prices are indicated in NT dollars.
- When a registered trademark is used, the registered trademark symbol ® should preferably be added, as a means to emphasize and draw to consumers' attention the fact that the mark is a registered trademark.
- Decorative designs used for the visual embellishment of goods are in principle not trademarks. But when determining whether a marking is a decorative design or a trademark, an overall judgment should be made based on general social conventions, the perceptions of relevant consumers, the marking and labeling practices of businesses in related fields, the mode of marking, and the position of the marking.