TIPS^®  Taiwan Intellectual Property Special

Protection to Geographical Indication in Taiwan

The importance of a geographical indication comes from its three values: 1. A geographical indication tells the origin of the product; 2. a geographical indication assures the quality of the product; 3. it also promotes the value of the products that originates from such geographical location. As a result, certain protections are afforded by the Agreement on Trade-Related Aspects of International Property Rights ("TRIPS") to a geographical indication to prevent unfair competition and damages to the value of the geographical indication. To cope with the requirements of TRIPS, Taiwan Trademark Law added a provision that prohibits registration of geographical indications of alcoholic beverage and allows the geographical indication to be registered as a certification mark to for the place of origin.

It has been disputed that whether the Chinese translation of the famous French red wine “Beaujolais,” is so similar that it is likely to cause confusion to the customers if the Chinese translation is registered on the goods of alcoholic drinks. In the past, the courts believed that the public in Taiwan is not familiar with French language and there is no consistent Chinese translation for “Beaujolais;” therefore there is no likelihood of confusion between “Beaujolais” and any Chinese translation of term and such Chinese translation can be registered as a trademark to be used on the goods of alcoholic drinks. This issue now can be solved by disallowing the registration of the geographical indication of alcoholic beverage.

It is not only the geographic indication of alcoholic beverage that needs to be protected; a geographical indication of goods other than alcoholic beverage may be of as great importance. For example, it is important for the India Tea Board to prevent others from registering the geographical indication, DARJEELING. While DARJEELING is not a geographical indication to alcoholic beverage, it has to rely on other grounds:

1. the mark is identical or similar to the mark of a famous domestic, foreign or international organization;

2. the mark is identical or similar to the mark of a domestic or foreign certification mark;

3. the mark is likely to cause confusion to the geographical origin of the goods.
However, the collection of evidence to establish those grounds is more difficult than baring the registration simply because it is a geographical indication for the alcoholic beverage. To register the geographical indication as a certification mark for the origin of the products is therefore the best method for protection that current Taiwan Trademark Law may offer to the geographical indication for goods other than alcoholic beverage. Those for whom the protection of a certain geographical indication is of great importance may organize an institution for certifying the origin and set up the standards for goods originated from such geographical location, and apply for registration of such geographical indication as a certification mark. This approach not only prevents others from registering a mark identical or similar to the geographical indication, but also increases the economic value of goods from this geographical area because an institution is carrying out the task of certifying the origin and quality of the genuine goods from such region.