TIPS^®  Taiwan Intellectual Property Special

Using Other’s Trademark as Domain Name Would be Deemed Illegal

As the fast development of the Internet, more and more cases reveal the phenomenon that the use of the domain name and the use of trademark have resulted in the disputes between the owner of a domain name and a trademark owner. According to a newly promulgated administrative order declared by the Taiwan Intellectual Property Office (IPO, Taiwan's Patent and Trademark Office), using other’s registered trademark or other’s famous mark as domain name would be deemed illegal.

In the above administrative order, the Taiwan Intellectual Property Office declared on March 7 that using other people’s registered trademark as domain name and then providing the identical or similar product/service on the website via the Internet would constitute trademark infringement under Articles 62 and 63 of the Trademark Law.

Moreover, the use and the designation of a domain name, even though not using for the purpose as a trademark, would probably violate Articles 20 (infringement of other’s trade dress) and 24 (unfair competition) of the Fair Trade Law, so long as such use will cause the confusion with the trademark owner’s business operation, facility and activity.

On the other hand, in the case that registering other’s famous domain name as one’s own trademark, if such use of trademark on the product/service has relations/affiliations with the product/service provided by the website of said famous domain name, and objectively causes the likelihood of confusion of the public, such application of trademark registration shall not be allowed in accordance with Article 37 of the Trademark Law.

While any dispute on the use of domain name arises, the owner of the domain name should, as soon as possible, file a petition for mediation with the TWNIC in accordance with the “Principle of the Domain Name Dispute Resolution.” The department in charge of domain name registration under TWNIC will revoke, revise and/or transfer the domain name if any administrative order or judicial judgement so instructed.