Judicial Yuan and the Intellectual Property Court Held Symposium on Intellectual Properties Laws

07/01/2010

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Judges' different interpretations of the intellectual property law have caused uncertainties in law application in intellectual property law field. To reduce such inconsistencies amongst judges, the Judicial Yuan and the Intellectual Property Court held a symposium on intellectual property laws on May 21, 2010.
Judges from the Intellectual Property Court, the Supreme Court, the Supreme Administrative Court, the district courts, and the high courts, as well as the public prosecutors, attorneys, patent attorneys and representatives from the Intellectual Property Office and the Petitions and Appeals Committee of the Ministry of Economic Affairs attended this symposium. The attendees considered and discussed the various opinions from the courts, and made consensus recommendations on both procedural and substantive matters relating to IP litigations. The Judicial Yuan will provide the results of their deliberations to all judges for reference purposes. Even though these consensus recommendations are not legally binding, they are nonetheless significant because it is very likely that judges will adopt them.
The symposium addressed the following issues:
l	What are the limits on copyright protection of database compilations?
l	Do updates to databases create new copyrights, thus indefinitely extending the period of protection?
l	In cases involving copyright infringement, may the court independently investigate and establish reasonable use before the defendant raises such defense?
l	Does the use of a registered trademark as a company name constitute trademark infringement?
l	How does one determine a court's jurisdiction in infringement cases involving foreigners or other foreign factors?
l	Does the use of trademarks in a three-dimensional form constitute infringement?
l	How should a court determine the appropriate amount of legal fees in civil trademark infringement suits that request both damages and injunctive relief?
l	If a trademark revocation case does not specify the product to be revoked, may the court rely on evidence showing use in one product to assume that the trademark has been used in all products, and dismiss the case?
l	Should a court consider the possibility of causing confusion in determining whether trademarks are similar?
l	Should opposition or invalidation actions based on allegations that the applicant is aware of prior use by another person be limited to situations in which the applicant became aware of the trademark through contractual, geographical, or business connections with the said person?