TIPS^®  Taiwan Intellectual Property Special

IPO newly promulgated “Color Combination Trademark and Service Mark Registration Criteria”

For the implementation of the trademark registration of color combinations provided in Article 5 of the Trademark Law, the Intellectual Property Office (“IPO”) promulgated “Color Combination Trademark and Service Mark Registrations Criteria” (“Criteria”) on February 2, 2000. The Criteria are applicable only to registration of trademarks composed solely of color combinations. Therefore, in cases of trademark applications for registration of design combinations of words, drawings, symbols and colors, the Criteria shall not apply.

Pursuant to the Criteria, so-called “color combination trademarks” shall mean the combinations of two or more colors which can be separated and which are used entirely or in part on goods or their packaging or containers. In addition to recording the class number and the denomination of the goods designated for use on the application, applicants for the color combination trademarks must submit the following documents with their applications:

Fifteen copies of the color combination trademark specimen. Trademark designs must be drawn to show the portion of the goods and their packaging or containers.
Three black and white copies of the specimen. A detailed written explanation in a publication form must be submitted articulating the use of the color in the color combination trademark.

Detailed explanation of the color combination trademark on whether the color expresses a special form, position, or content, and the actual type of color, brightness, and intensity. These Criteria shall also apply to color combination trademark used on products in liquid or powder form product, if the trademarks can be distinguished from the outside appearance of the packaging and containers.

It should be noted that, the application for color combination trademarks, which have one of the following conditions, should be denied pursuant to Item 10, Paragraph 1 of Article 37 of the Trademark Law:

The color combination is naturally produced during the manufacturing process of the goods;

The color combination is a requirement or commonly adopted because of economic considerations;

The color combination is necessary in order to make full use of the goods.

The Criteria shall apply mutais mutandis to color combination service marks.

The Fair Trade Commission Finds Registering Other’s Famous Mark as Domain Name Illegal

The Fair Trade Commission (FTC) adjudicated on February 23, 2000 that registering other company’s famous mark and/or trade dress as its own domain name will impede the original owner of said name from entering the internet to obtain the opportunity of fair transactions, which constitutes the violation of Article 24 of the Fair Trade Law (unfair competition).

When Carrefour Company, a famous grocery sale and chain store, applied for the registration of “carrefour” as its domain name with TWNIC, it found that the domain name “carrefour” and the website “www.carrefour.com.tw” has been pre-registered by another company, Great Sun Computer Company (Great Sun).

During the investigation, the FTC found that Great Sun is a computer company which provides hardware maintenance service and works on software development. Great Sun obtained “carrefour” as its domain name in the end of 1996. Great Sun argued that since the company’s belief was “care for your computer,” it therefore registered “carrefour” as its domain name due to the similarity of pronunciation between “care for your computer” and “carrefour.” Moreover, Great Sun has not yet formerly used the domain name since the company did not have its own website. The FTC first found that “carrefour” has been registered by Carrefour Company as its service mark since 1987 and that Carrefour Company has used this service mark in all of its chain stores. Therefore, “carrefour” has become a famous mark and trade dress known by consumers. In contrast, the Chinese name and English name of Great Sun have no relation with “carrefour” at all.

Since Great Sun registered “carrefour” as its domain name in advance, Carrefour Company was unable to use its own service mark as its domain name on the Internet. Given the above, Carrefour Company lost the opportunity to enter into the Internet by using a domain name which is known to its customers. Accordingly, the FTC found that Great Sun’s pre-registration of other company’s famous mark has affected the competitive effectiveness and impeded other’s from fair competition, which constitutes the violation of Article 24 of the Fair Trade Law.

Taiwan and U.K. Executed Agreement on Cooperation Concerning Mutual Recognition of Intellectual Property Rights The British Trade and Cultural Office in Taipei and the Taipei Representative Office in the United Kingdom executed in March the “Agreement on Corporation Concerning Mutual Recognition of Intellectual Property Rights” (Agreement).

Pursuant to the Agreement, based on the reciprocity principal, the intellectual property owners of the United Kingdom and Taiwan can enjoy the following privileges and rights:

Any natural or legal person of Taiwan or the United Kingdom, who has filed for a patent, an industrial design, an invention patent, utility model, or design patent in the United Kingdom or Taiwan, including the various kinds of industrial patents recognized by their respective laws, in a country which is a party to the Paris Convention for the Protection of Industrial Property or a member of the World Trade Organization and also has a reciprocal priority arrangement with Taiwan on or after March 20, 2000, will enjoy, for the purpose of filing with authorities of the other country, a right of priority.

The relevant authorities of each country will accept applications for patents and grant patents for inventions concerning micro-organisms when filed by any natural or legal person of the other country, as the case may be.

For the purpose of patent disclosure, the relevant authorities of each country will recognize the microorganisms deposited in accordance with the relevant provisions applicable in each country.

The relevant authorities of each country will extend the protection conferred by a patent for certain technologies for a maximum of 5 years after the expiry of the normal, full term of that patent in accordance with the relevant provisions applicable in each country, as the case may be.