TIPS^®  Taiwan Intellectual Property Special

Taiwan Updates

Prohibition of Using Another Person’s Trademark in the Name of a Company

The protection of trademark rights in Taiwan has become more thorough! The practical experience of the court concludes that even if the name of a company has been registered and approved by the trade authority, and given the exclusive rights to the business name, if the said business name has used the word(s) contained in a well-known trademark or a registered trademark of another person, resulting in diluting the reputation of another person’s trademark, or confusing consumers of related goods and services, the said business name may still constitute infringement of another person’s trademark rights. Therefore, in order to avoid disputes, a business owner should conduct a search to determine if the chosen business name might infringe another person’s registered trademark, before making a business name registration.

In current practice, when considering the granting of a business name registration, the business name registry authority only determines whether the business name being registered has been previously registered by another company, or whether the name has been registered in the same city or country by another business. However, a search or an examination corresponding to related trademark registrations is not conducted. In reality, general business owners have long had the wrong impression that as long as a business name has been registered and approved by the trade authority, the company shall have the exclusive rights to use the business name. Nevertheless, these business owners did not realize that a business name may have a conflict of rights with another person’s well-known trademark or registered trademark. Thus, it is common to see a business owner being troubled by the accusation of infringing another person’s trademark, after using a registered business name in preparation to start a business, e.g. making a business sign, printing catalogs or advertisements, etc, or actually using the said business name to conduct business. In a case like this, a business may even need to change its name, and face the resultant loss or damage.

Pursuant to the provisions in Article 62 of the Trademark Law of Taiwan, knowingly using a well-known registered trademark or a registered trademark of another person, and the word(s) contained in the said well-known or registered trademark, without the consent of the trademark right holder, as the company name, trade name or domain name, or any other representation identifying the body or source of the business, which result in diluting the distinctiveness or reputation of the well-known trademark or causing confusion to relevant consumers thereof, is deemed as infringing the trademark right. In pursuance with provisions of Paragraph 1 of Article 61 of the Trademark Law, a trademark right holder may, based on the level of damages, claim for damages from a person infringing his/its trademark rights. The trademark right holder may request for excluding infringement thereto; in case of likelihood of infringement, the said right holder may also request for the prevention thereof.
As society advances into a fully computerized information era, any person can easily obtain trademark registration information from Taiwan Intellectual Property Office’s website. Thus, in practice, the court concludes that a business owner can obtain the related information easily. Therefore, the using of the word(s) contained in another person’s “well-known registered trademark,” or “registered trademark,” as a business’ company name, trade name, domain name, or any other representation identifying the body or source of the business, without the consent of the trademark right holder, is considered as the so called “knowingly using” prescribed in Article 62 of the Trademark Law. In other words, the more famous another person’s registered trademark is, the more easily a business owner will be considered infringing the trademark right with subjective deliberate intention.

There have always been debates in practice, resulting from the situation where a business’ company name, trade name, domain name, or any other representation identifying the body or source of the business, is identical to another person’s previously registered trademark, which causes confusion or misinterpretation by the consumers. The thought that as long as the name of a business is not being used as a trademark, the trademark rights of another person will not be infringed, is against the social norm and also unreasonable. Since the purpose of a trademark is for the consumers to identify and differentiate the source of goods and services, and represent the reputation and quality of goods and services, it shall be deemed as having a certain degree of relation with the name of the business. Therefore, in order to implement the purpose of protecting the rights of a trademark right holder, and enforce trademark protection, trademark and legal authorities have corrected their previous opinions. Hence, a business owner must conduct a trademark search before registering a business name, in order to protect his own rights or that of another person’s.