TIPS^®  Taiwan Intellectual Property Special

Registering Domain Names is Not the “Use” for Trademark Purposes

The TIPO released an explanation to clarify the nature of use of a trademark in a domain name. The TIPO pointed out, the “use” for trademark purpose is, in order to possess, display, or distribute goods for marketing purpose, using a trademark on such goods or packaging, container, label, instruction literature, price list or similar articles thereof. Merely registering the trademark as a domain name or part of a domain name without actually distinguish the trademark owner’s goods/services from others’ on the corresponding website is not “use” for trademark purpose. However, for a domain name that denotes to commercial activities by itself, in particular those “.com” domains, whether the registrant who obtains the domain name registration of other’s trademark in bad faith constitutes trademark infringement is a question that should be determined by the judicial branch.