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The Amendments to the Trademark Act have been effective since 1 July 2012. The following amendments have substantial impact on the business or operation of enterprises:
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I.
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Substantial impact due to amendments to the Trademark Act:
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1. |
Scopes of the subjects protectable as trademarks:
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The previous Trademark Act only allows limited types of the trademarks (3D device, single color, color combination, sound and the non-conventional trademarks) but the amendments will give more protection for more kinds of the trademarks, such as hologram trademarks, position trademarks, and motion trademarks. Even if "scent" (smell) might be protected as a trademark.
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2. |
New regulations regarding exclusive and non-exclusive license:
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Under the previous Trademark Act, both exclusive licensee and non-exclusive licensee are entitled to enforce the trademark rights.
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However, according to the Amendments, in case of exclusive license, even the trademark owner cannot use the trademark during the periods and areas of such exclusive license. The exclusive licensee is entitled to take any legal actions against trademark infringement like the trademark owner. A non-exclusive licensee will no longer be allowed to have any remedies against trademark infringement. The so-called "sole licensee" is not equivalent to an exclusive licensee.
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New provisions are added which stipulate that, where a trademark invalidation or revocation action is filed, supporting evidence should be submitted to show use of such trademark in the three years before filing of the action:
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If the trademark relied upon by an applicant to bring an invalidation or revocation action has been registered for a period of three years, the applicant shall submit evidence showing his/her/its use of such trademark during such three-year period, or any facts or evidence that his/her/its non-use was with good cause.
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Under the amendments, it is very important for the trademark owner to continuously use the registered trademark for three years. Otherwise, it will be prohibited to file invalidation or revocations.
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II.
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Unsettled issues not included in the amendments:
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The amendments fail to resolve some controversial issues, including the following:
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Parallel importation (grey markets):
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Whether or not (1) the parallel importation (grey markets) into Taiwan of the genuine trademark products and (2) the "sell-back" of OEM products out of Taiwan constitute trademark infringement under the Trademark Act are quite important and still controversial issues. Nonetheless, either the previous Trademark Act or its amendments are silent on both of the two issues. Thought the majority of the courts hold that both acts will not violate the Trademark Act, some others may take different views.
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2. |
Sell-back Issues of OEM products:
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According to the Trademark Act, without consent of the registered trademark owner in Taiwan, use of a logo, which is identical with or similar to the registered trademark, on the same or similar goods, or sale, importation, exportation of these goods will constitute trademark infringement and will be subject to civil and criminal liabilities.
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Whether or not the manufacture and export of the so-called OEM products would constitute trademark infringement has been a very controversial issue (we may call such an issue as "sell-back"). While the Trademark Act itself is silent on this issue, there are court's judgments or opinions expressed by some of the judicial authorities advocate that the OEM products ordered by and shipped back to the owner of a trademark registered in foreign countries without any distribution of such products in Taiwan does not constitute infringement against the prior conflicting rights in Taiwan. The interpretation made by the Intellectual Property Office (IPO, the Trademark Office in Taiwan) also supports this point of view. However, there are courts rendered judgments to the contrary.
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Manufacture and/or exportation of the OEM products are the possible exception to trademark infringement. However, the courts accepted such an exception so far only on the condition that the OEM products ordered by and shipped back to the owner of a trademark registered in foreign countries.
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Since the amendments to the Trademark Act will raise substantial impact on the business or operation of the enterprises, the enterprises should take proper measures at early as possible.
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