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Patent
It Is Infringing To Name A Business By Adopting Well-Known Trademarks – Draft Amendment To Trademark Act (2)
Under current applicable laws, governing laws for the registration of corporate names and that of English company names, namely the Company Act and the Foreign Trade Act, are silent with regard to a collision of company names and well-known trademarks. However, it has already been deemed as an infringement of a trademark right by Article 62 of the Trademark Act if a company knowingly adopts a well-known trademark as its own company name. The recent Supreme Court’s opinion in the remanded case Intel Corporation v. Intel-Trans Co., Ltd. shows that the protection provided by Article 62 only applies to corporate names registered before the Department of Commerce, and as such, English names for companies doing foreign trade are excluded from the Trademark Act protection.
To address the loophole, the TIPO has already proposed the Amendment to Article 62 of the Trademark Act:
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Current Provision
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Amendment to the Provision
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any other representation identifying the body or source of the business, and hence diluting the distinctiveness or reputation of the said well-known trademark…
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any other name identifying the body of the business, and hence is likely to confuse the relevant consumers, or likely to dilute the distinctiveness or reputation of the said well-known trademark…
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After the Amendment becomes effective, it shall be deemed a trademark infringement where any business knowingly uses a name identical or similar to a well-known registered trademark to identify its own business. TIPO emphasizes in its legislative rationale that the amended provision applies to English names of companies registered with the BOFT.
The Amendment to the Trademark Act will soon close the loophole for exploiting well-known trademarks by any kind of business names.
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