Trademark

INTEL Unsuccessfully Prevented From Usage As Other’s English Company Name

After being appealed to the Supreme Court and remanded for retrial for the second time, the IP Court rendered a decision in Intel Corporation v. Intel-Trans Co., Ltd. on April 1st, 2010, in which it abandoned the Court’s previous judgment that forbade use of INTEL as the feature of the Appellant’s English name “Intel-Trans” under the applicable laws. The decision dismays and upsets many well-known trademark owners, in particular, ACER, ASUS and HTC. It therefore draws the relevant authorities’ attention to the loophole in the protection of well-known trademarks.

In practice, trademarks, corporate names and English names of companies are administered by different competent authorities and subjected to different applicable laws. While trademarks are under the authority of the Intellectual Property Office (TIPO) and ruled by the Trademark Act, the registration of corporate names in official Chinese language is stipulated under Article 18 of the Company Act and governed by the administration of the Department of Commerce (DOC). Further, any businesses that engage in foreign trade also need to record their English names with the Bureau of Foreign Trade (BOFT) pursuant to Article 9 of the Foreign Trade Act.

In this case the Appellee, Intel Corporation, claimed that “Intel” is its registered trademark used on computer and telecommunication-related goods and services, which has been ranked one of the top ten trademarks in the world and is well-known by relevant businesses and consumers. However, the Appellant adopted “Intel” as a part of its English name “Intel-Trans,” filed a recordation with the BOFT for doing international transactions and shipping agency businesses, and further used “Intel-Trans Co. Ltd.” on its billboard advertising, business cards and documentation, namely Customs declarations, business correspondences, billings, and banking transactions. The Appellee sued the Appellant for a violation of Article 62 of the Trademark Act and Article 20 of the Fair Trade Act.

However, Article 20 of the Fair Trade Act was precluded from the application because the Court found the Appellant’s use of its English name “Intel-Trans Co. Ltd.” does not fall into the categories of the prohibited unfair competition acts regulated in the said provision.

Article 62 of the Trademark Act provides the most straightforward stipulation that protects well-known trademarks from being infringed in the form of company names. It stipulates: “A trademark right infringement shall be deemed to have occurred where…knowingly using a trademark identical or similar to a well-known registered trademark of another person, or using the word(s) contained in the said well-known trademark as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence diluting the distinctiveness or reputation of the said well-known trademark…” In the retrial, the IP Court deliberated the interpretation of law on the term “company name“ described in Article 62 of the Trademark Act to ascertain whether the scope of the term encompasses both the corporate name in the meaning outlined by the Company Act, and the selected English name required by the Foreign Trade Act.

The Court then adopted a strict interpretation of the law and opined that the term “company name” prescribed under Article 62 should only refer to the corporate name under the meaning of Company Act. While a corporate name serves as one of the effective criteria to incorporate a company and must be applied for approval before proceeding to the company incorporation registration procedure, the recordation of a company’s English name with the BOFT bears no legal effect to the incorporation of a company under the meaning of the Company Act. Consequently, Article 62 of the Trademark Act does not extend its application to possible well-known trademark infringement on the adoption of English company names.