Field of Endeavor

This is the first time we make trademark-related topics the subject of our newsletter.  We hope this newsletter will provide some kind of informative information to all of the readers.

Background Statement

Patent and trademark are not twin in reality but always occur conjointly in fact by which we try to describe the following phenomena:

1. Normally, a firm handling patent matters often deals with trademark matters;

2. One who seeks for patent protection normally will file trademark applications although volume applications on the one of them need not represent volume applications on the other one of them;

3. They both are categorized as intellectual property rights;

4. They both are to be filed with the same official authority.

It would appear that people often consider that as a mixture of technology and law, patent is highly technical and is difficult for laymen to really understand whereas trademark is relatively simple.  It would seem that this is not necessarily correct in that:

1. If patent is a mixture of technology and law, trademark should be a complex of style and law;

2. Although the patent practice has complicate rules or principles for decision in various situations, the trademark practice, e.g. similarity or dilution also involve in non-simple rules or principles for judgment;

3. While to seek satisfactory patent protection or desiredly enforce patent rights are not easy since technological knowledge and sound patent-related skill are required, to acutely seek trademark protection or properly enforce trademark rights are not either since some trademark theories and practices must be realized.

Although it is anticipated that most of our newsletters will be related to the patent field, we will not fail to issue in respect of the trademark when there is good opportunity to update or provide on the trademark side.

Summary of Developments

The ROC Trademark Law was promulgated on May 6, 1920 to be effective as of January 1, 1921.  It was heretofore amended on November 23, 1935, on October 19, 1930, on October 24, 1958, on July 4, 1972, on January 26, 1983, on November 29, 1985, on May 26, 1989, on December 22, 1993, on May 7, 1997, on May 29, 2002, and finally on April 29, 2003.  The final amendment was significantly made in order to keep pace with the pace of march of events or be in alignment with advocacy or advice of an international treaty.  In the last amendment, which was promulgated on May 28, 2003 to be effective as of November 28, 2003, there are 50 articles amended, 40 articles newly added and 23 articles deleted.  The outline or details of the amendments, which were made will be discussed hereinafter.

Brief Items to be Discussed for Presenting Issues We Concern

* Objectives of the Trademark Law (Article 1)

* Contents of Trademark (Article 2)

* Priority Claim (Article 4)

* Definitions of Trademark (Article 5)

* Trademark Use (Article 6)

* Restoration (Article 9)

* Electronic Procedure (Article 14)

* Examiner (Article 15)

* Application (Article 17)

* Divisional Application (Article 21)

* Exclusions from Registrability (Article 23)

* Registration (Article 25)

* Payment of Registration Fee (Article 26)

* Term (Article 27)

* Renewal (Article 28)

* Exemption from Trademark Rights (Article 30)

* Divisional Application (Article 31)

* Trademark Recordal (Article 32)

* License (Article 33)

* Distinguishing Notice (Article 36)

* Pledge (Article 37)

* Abandonment (Article 38)

* Opposition (Article 40)

* Market Investigation Report (Article 43)

* Partial Cancellation (Article 47)

* Conditions for Invalidation (Article 50)

* Invulnerable Registration (Article 51)

* Invalidating Examiners (Article 53)

* Results of Invalidation (Article 54)

* Res Judicata of Invalidation (Article 55)

* Registration Repeal (Article 57)

* Trademark Use (Article 58)

* Infringement on Trademark Rights (Article 62)

* Customs Practices (Article 65)

* Seizure Repeal (Article 66)

* Damages for Goods Being Seized (Article 67)

* Certification Mark (Article 72)

* Collective Trademark (Article 76)

* Improper Use of Special Marks (Article 79)

* Transition Provisions (Articles 84 ~ 92)

* Effective date (Article 94)

Detailed Analyses

* Objectives of the Trademark Law (Article 1)

According to the legislative reasons, the function of maintaining the fair competition order in the market can in fact be derived from the objects listed in the current law.  Especially, since kinds of new commercial actions closely related to trademarks have been evolved and developed, making the maintenance of fair competition order in the market, e.g. strengthening protections of the famous trademark and geographic indication for alcohols has been the international legislative trend.  Specifically:

1. Article 6bis of Paris Convention for protecting the intellectual property rights revised in Stockholm in 1967 and Article 16 of TRIPs of the Uruguay round in April, 1994 both emphasized the protection for famous trademarks for maintaining the market order through fair competition;

2. The amended law has accordingly reflected to this effect, e.g. prohibiting the registration of a trademark, which might abate distinctiveness or reputation of famous trademark or mark as provided in Article 23(1)(12).

* Contents of Trademark (Article 2)

Under the current law, there are a trademark according to Article 2 and a service mark according to Article 72.  Nevertheless, whether a trademark is to symbolize goods or service is not always clear under the commercial activity nowadays.  Further, it has been made clear by a precedent of Pan No. 794 by the Administrative Court in 1984 that it is possible for goods and service to form a similar concept under this law.

According to the new law, a trademark shall cover the definition of the conventional trademark and service mark.  Such amendment becomes more appropriate in that:

1. The new law will allow multiple classes in one application, which will be impossible if multiple classes cover goods and services;

2. Multiple-class application will become impossible if a trademark is intended to be used in a plurality of similar business items which, however, cannot be definitely judged to fall in the purview of goods in a first class or services in a second class;

3. The international trademark laws so tend.

In addition, under the current trademark practice, a business certificate is required to substantiate that the filed trademark is to distinguish goods in the ‘business,’ which is incompliance with the requirement that no accompanying business certificate or business indication shall be required upon entertaining a trademark application as set forth in Article 3(7) of the Trademark treaty put through in Geneva on October 27, 1994 so that the word, ‘business’ in the article is deleted.

Furthermore, one who files a trademark application has so proved that it has the intention to use the trademark for accumulating its reputation regardless in respect of goods or service.  Accordingly, whether ‘bona fide intention’ to use a trademark in the article is a declaratory or compulsory provision becomes indefinite.  Accordingly, the ‘bona fide intention’ clause is deleted since the trademark registration can be repealed through no use after registration according to the new Article 57(1)(2).

* Priority Claim (Article 4)

According to Article 4(D) of the Paris Convention, a priority claim needs only indicate the foreign filing date and the country entertaining the application.  As to the application number for ascertaining whether it is the corresponding application, it can be supplemented within the prescribed time period so that the requirement of submitting the application number upon filing is deleted.

* Definitions of Trademark (Article 5)

This article is referred to constituents of a trademark and its distinctiveness.  As to constituents of a trademark, a color trademark is limited to a color combination excluding registrability of a single color under the current law.  The amended law accordingly makes it clear that a single color having become an identifying mark for goods or service shall satisfy the distinctiveness required for a trademark.

Through developments of the world, sound or 3-dimensional shape have gradually been recognized as competent trademarks internationally so that they are so accepted according to the amended law.

A trademark under this law shall be a mark enabling relevant consumers to distinguish the identifying source.  The judging standards shall be set by “relevant consumers of goods or service.”  Specifically, if goods in daily use are concerned, the general public can make the judgment.  If, however, goods or service are only circulated among experts or practitioners, the judgment should be made by such experts or practitioners.  Accordingly, “the general goods purchaser” clause in the article is changed into “relevant consumers of goods or service.”

* Trademark Use (Article 6)

Article 6 has been changed into that “the use of a trademark referred to in this Law shall denote the use of the trademark on goods, services or its associated articles, or through utilization of planar image, digital video/audio, electronic medium or other medium, sufficient to cause associated consumers recognizing it as a trademark, for marketing purpose” in order to reflect developments of electronic commerce and the Internet for accounting for new trademark use type and economic development situation.

* Restoration (Article 9)

Since quite a few trademark applications are filed by foreigners, the time period for restoration before the trademark dedicated office is still kept within 30 days, rather than 10 days as stipulated in Article 50 of the Administrative Procedural Law, after extinction of the involved cause since 10 days are too short to be followed by a foreigner.

* Electronic Procedure (Article 14)

Since the Executive Yuan alleges to establish a healthy electronic governmental environment by promoting the information processing standard, application, other procedures related thereto and registration books may be electronically made.

* Examiner (Article 15)

According to the “Qualification Ordinance for Trademark Examining Officials,” trademark examining officials include trademark senior examining official, trademark examining official and trademark assistant examining official.  In addition, as provided in “Organization Ordinance of Intellectual Property Office of Ministry of Economic Affairs,” expert examining persons hired thereunder may serve for the trademark examination work.  The word examiner as referred to in the amendment trademark law include above-described trademark examining officials and expert examining persons.

* Application (Article 17)

According to Article 17(2) that “trademark in the preceding paragraph shall be presented in a visually perceptible device,” a trademark must be clearly and concretely represented since it involves in examination and publication of registration.  As examples, the sound trademark should be depicted by a staff or other note-representing manner and the 3-dimensional trademark should be represented by the perspective view or other sketching manner.

One application with multiple classes is made clear in this Article 17(4).

* Divisional Application (Article 21)

It appears very natural for Article 21 to stipulate that “an applicant may petition before the trademark dedicated office to divide designated goods or services to be used to be included in two or more registration applications, which take the original registration application date as the filing date.”  Accordingly, it might be difficult to imagine that under the current practice, the applicant cannot file a divisional application from the original application and need to newly file an independent application seeking protection for what are contained as a part in the original application, which will certainly harm the rights of the applicant logically derivable from the original application.  Fortunately, such mishap will come to an end soon.

* Exclusions from Registrability (Article 23)

The time point for determining whether a trademark belongs to an exclusion from registrability is the filing date in practice.  Nevertheless, since a trademark can only be registered after examination only happening a certain period of time after the filing date, it is not seldom found that although there exists a case excluding the application from registrability upon filing, the case vanishes upon examination such that there are no violation of the public interests and/or no encumbrance to rights of others.  Accordingly, the amended law takes it reasonable that the determining time point should be the time when the examination takes place.

Amended Article 23(1)(3) excludes a trademark “being general mark or name of designated goods or service” from registrability.  This new Item combines together ‘common mark in custom’ of Item 8 and ‘general name’ of Item 10 of the current Article 37(1) since either of them has no distinctiveness for distinguishing the source through common use in the same trade or business.  Furthermore, under current Article 37(1)(8), there is a requirement of “in custom,” which, however, is doubtful and deserves to be deleted since in this fast changing era, it is quite possible that a trademark can become a common mark in the trade or business in a short time.  Still more, whether a trademark similar to the common mark possesses distinctiveness should be separately judged so that in the amended article there is no inclusion of the “similar” situation.

Amended Article 23(1)(8) excludes a trademark “identical or similar to name, emblem, badge or mark of an international famous organization or domestic or foreign famous constitution” from registrability.  The term ‘international famous organization’ is replacing the term ‘red cross’ under the corresponding current law in order to broaden the coverage, e.g. UN, APEC, WTO…etc..  Further, the term “foreign famous constitution” is replacing the current term “international famous constitution” in order to make it clear that the constitution per se needs not be international as long as it is internationally famous.

Amended Article 23(1)(12) adds exclusion of a trademark “abating distinctiveness or reputation of famous trademark or mark” from registrability where the word ‘abating’ we use is equivalent to ‘diluting.’  WIPO published the common resolution for provisions regarding the protection of famous trademarks in September, 1999, specifically pointing out that judging a famous trademark shall consider the recognition by the relevant public, rather than the general public, of goods or services.  In other words, in addition not to causing confusion or mistake with another person’s famous trademark, dilution to the famous trademark shall be avoided.

Amended Article 23(1)(13) excludes a trademark “identical or similar to another person’s registered trademark or earlier filed trademark of identical or similar goods or service, thus likely causing the public to confuse or mistake provided that this shall not apply subject to consent to file from the owner of the registered trademark or earlier filed trademark unless both trademark and designated goods or service to be used are the same” from registrability.  With regard to this provision:

1. It combines provisions of the current Article 37(1)(12) and Article 36;

2. The rationale for the above two current articles is that it is likely to cause confusion or mistake to the consumer as a result of the similarity;

3. It is thus clear under provisions of current articles that whether there is a similarity and whether there is a confusion or mistake sometimes are independently judged;

4. Nevertheless, judging whether two trademarks constitute similar shall determine in totality whether it is likely to cause confusion or mistake.  In order to make this concept clear, the law is thus amended.

Under Article 37(1)(11) of the current law, rights of individual person and company are included altogether which are respectively found in separate Articles 23(1)(15) and 23(1)(16) in order to have a refined legislation since what is sought for the natural person is to protect rights of personality of the individual whereas what is cared about the juristic person is to safeguard the commercial order so that they should be differentiated from each other in order not to confuse legal interests thereof.  Further, the word ‘nationwide’ in the term ‘famous nationwide’ in the current law is deleted since being famous, which appears to represent what is involved in is considered famous in the sector of the relevant consumers, itself is enough.  Such deletion gets some contributions from Explanation No. 486 of Great Judge Conference that any name of juristic person or any other organization having no right capability is eligible for protection under the Trademark Law as long as it has ‘substantial reputation’ and ‘interests for protection.’  Since under the current law, if a trademark is identical to the name of juristic person, trade business or other organization, whether it is registrable is determined by whether goods designated to be used by the trademark are the same with those run by juristic person or trade business.  Which is considered improper under the amended Law since whether it is registrable should be determined by whether the relevant public is likely caused to confuse and mistake in the matter.

Article 23(1)(17) newly excludes the registrability of a trademark “having been irrevocably adjudged that the trademark infringes copyright, patent right or other right of another person provided this provision shall not apply subject to consent to file for registration from said another person.”

Article 23(1)(18) newly excludes the registrability of a trademark “identical or similar to the alcohol geographic indication of this country or country or territory having reciprocal recognition as to trademark protection with this country and designated to be used in alcohol goods” in order to protect the alcohol geographic indication.

* Registration (Article 25)

According to Article 41 of the current law, a trademark will be registered only after there is no opposition during the 3-month publication period or the opposition has been irrevocably dismissed.  Nevertheless, in the current practice, only no more than 3% of the allowed applications are opposed.  Further, among those which have been opposed, only 1% out of them are withheld.  In order that most of the applications can get registered as earlier as possible, the post-registration system is thus adopted.  Accordingly, this article makes it clear that the trademark will be registered and published after granted and paying the first installment of the registration fee.

* Payment of Registration Fee (Article 26)

According to the amended law, the trademark will be published and registered only after the registration fee is paid.  Accordingly, the registration fee has a significant control on rights of the applicant.  Under the present trademark practice, it is not seldom found that a trademark has not been used for three years after registration or is not interested to be used further.  In order that a trademark can be more effectively put into use in order to naturally phase out short-period goods in the market, this article stipulates that the registration fee can be paid in two installments in order to alleviate the burden of the registrant.  Nevertheless, the second installment of the registration fee must be paid in three months prior to the expiration of 3 years from the trademark registration or publication.

* Term (Article 27)

Under the current law, a person trying to use the same trademark device on the similar goods or using a similar trademark device in the same goods shall seek registered an associated trademark for protection.  Such associated trademark system is to be abolished as a result of reference with the abolitions of associated trademarks by the UK and Japan Patent and Trademark Offices, in order to avoid the unduly accumulation of the non-use trademark and to reduce examination cost and difficulties in administrative management.

Under the current law, a person trying to use the same trademark device on goods which are neither identical nor similar to but are relevant in nature to those of the trademark shall seek registered a defensive trademark for protection.  Since the new law has provided the diluting provisions which can serve for the purposes of a defensive trademark, the defensive trademark is to be gradually abolished through the transition clause.

It might sound strange why the above is relevant to the sub-title of “term”?  This is because either the associated trademark or the defensive trademark is to be expired with the principal trademark regardless of how late they are filed with respect to the filing date or registration date of the principal or regular trademark.

* Renewal (Article 28)

Under Articles 57(1)(2) and 59 of the new law, a trademark registration will be terminated or abolished through non use so that upon renewal, it should be unnecessary for the Trademark Office to examine whether the trademark to be renewed has been used.  In practice, most of trademark renewal applications have lawful uses.  To determine by expending a substantial administrative resources as to whether or not the trademark has been used upon examining the renewal application will become clumsy and not wise simply because there are few instances that the trademark to be renewed has not been used, which should be the reason why Article 13(6) of the international Trademark Law Treaty prohibits the substantive examination upon petitioning the renewal application.  In order to substantiate the protection of rights of the people and the promotion of the administrative efficiency as provided in Article 1 of the Administrative Procedural Law in order that the applicant can obtain the renewed trademark rights, the substantial examination for the renewal application should be abolished while whether the trademark has been used is to be regulated otherwise.

* Exemption from Trademark Rights (Article 30)

Where the 3-dimensional shape of goods or package is required for exercising its functionality, the use of such shape should not be interfered by other’s trademark rights since the new law has included the protection of 3-D trademark.

Where a person claims the exemption of the trademark infringement claim that a same or similar trademark has been used in good faith on the same or similar goods or service, the new law has made it clear that the date prior to which such use happens should be the filing date of other’s trademark registration.

The third paragraph of Article 30 of the new law has also made it clear that for goods put in auction or disposed under the law by the relevant authority, the trademark rights owner shall not claim the trademark rights in respect of said goods.

* Divisional Application (Article 31)

According to Article 7(2) of the Trademark Law Treaty, the original application for registration can be divided during the period in which the trademark dedicated office is deciding whether a registration shall be allowed or in which the legal proceedings are initiated.  Perhaps, partly due to the fact that most of international organizations do not accept or admit Taiwan, our current trademark law does not follow spirits of the Trademark Law Treaty in this respect. 

Specifically, under the current law, if the applicant inadvertently puts one or more goods or service items, which should be classified in other class, in a trademark application, the applicant cannot file a divisional application for those one or more items but can only file an independent application therefor.  The seriousness of this situation might be presented in the following case: if an application is to be rejected, opposed or cancelled, the applicant can do nothing but seeing its application being cruelly rejected, opposed or cancelled totally, even if there will be happening that it will lose the rights to seek registered the trademark to be used on those one or more items, which the applicant can competently enjoy if it files those items in the correct class in the very beginning.  Such result appears to be not so humane.

Accordingly, Article 31(2) makes it clear that “the petition to divide the trademark rights in the preceding paragraph may still be made before the trademark opposition or cancellation application is irrevocably decided” in order that unless the trademark opposition or cancellation application has been irrevocably decided, the trademark applicant can optionally petition for a divisional application.

* Trademark Recordal (Article 32)

The new law makes it clear that any change on the trademark registration matters shall be recorded before the Trademark Office for public notice.  If not, the registrant shall not have a locus standi against any third party.

According to the amended Article 20(3), the applicant can in a change application simultaneously petition to make the same change about the trademark registration matters for a plurality of trademark applications.  The amended law makes it clear that such convenient measure is applicable to trademark registrations.

* License (Article 33)

The newly added Article 33(3) makes it clear that “where the trademark rights have been assigned after the licensing recordation, the licensing contract shall survive the assignee to subsist” so that use interests of the licensee are duly protected.

If it is apparently difficult for license indication on its goods, package, container, or goods or document in business, the newly amended Article 33(4) makes it clear that “the licensing notice may be made on business place or other relevant goods.”

* Distinguishing Notice (Article 36)

After amendments, since a trademark application can be filed for goods and services of various classes, and the trademark rights can be divided and optionally assigned, Article 36 has been made clear that “if through assignment of the trademark rights, there are two or more trademark rights owners using the same trademark on similar goods or service or using the similar trademarks on identical or similar goods or service, which is likely to cause confusion or mistake to the relevant consumer, each trademark rights owner shall affix appropriate distinguishing notice in use.”  Specifically, the one who is to affix appropriate distinguishing notice is not necessarily the assignor or assignee.  Rather, it is the obligation of ‘each’ party.

* Pledge (Article 37)

In practice, there is doubt as to whether the trademark rights can be established for several pledges.  In order to secure the interests of the pledgee and to fully exploit the transaction value of the trademark rights for the trademark owner, the amended new law makes it clear that the trademark rights can have plural pledges so that the owner can use the trademark rights as a surety for another’s credit but its priority of the pledge depends on the order of recordation.

* Abandonment (Article 38)

The amended new law makes it clear on the one hand that the owner can optionally abandon its trademark rights subject to no damages causable damages or hurt to the licensee or pledgee, and on the other hand that such abandonment should be made in written.

* Opposition (Article 40)

Under Article 15(5) of TRIPS, the trademark should be published before or after its registration provided that there is a reasonable opportunity to cancel the registration.  The amended new law has changed the pre-registration opposition system into the post-registration opposition system.  Specifically, although there is the cancellation system after the trademark registration under the current law, it can only be instituted by the interested party rather than by any third party.  In order to allow opposition by any third party, the post-registration opposition system is introduced. 

In practice, the opposition is examined by one examiner whereas the cancellation is examined by three examiners.  Since the new law will allow multi-class application, Article 40(2) makes it clear that “the opposition in the preceding paragraph may be made in respect of a portion of goods or service designated to be used by the registered trademark.”

* Market Investigation Report (Article 43)

For deciding the existence of a truth or fact, results of the market investigation should be referred sometimes.  The availability as a proof for such market investigation might need to be illustrated by parties.  Accordingly, this new article allows submission of the market investigation report and the statement or illustration before the Office by the relevant party.

Although the market investigation report will provide an aid upon examination, it remains unclear what are standards or criteria for rendering a perfect examination while the examiner is examining the market investigation report.

* Partial Cancellation (Article 47)

According to the amended Article 47, “wherever the cause for cancellation in the preceding article exists in partial goods or service designated to be used by a registered trademark, the registration may be cancelled only in respect of said partial goods or service.”  As a matter of fact, this is not a new provision since this is the practice in the past.  Accordingly, this new amended article simply makes it clear what was and is practiced here.

* Conditions for Invalidation (Article 50)

Under the current law, a trademark having been registered for 10 years is still susceptible of being invalidated.  Accordingly, it relates to a provision of period for enforcing the rights.  After this new amendment, since only formal examination rather than substantive examination will be exercised for renewal registrations, its nature relates to maintenance of the effectiveness of the original registration.  Accordingly, the period for invalidation as to whether the original registration violates the law is irrelevant to that for enforcing the rights.

Amended Article 50(2) stipulates that “provision in the preceding paragraph shall be applied mutatis mutandis where infringement of a trademark on copyright, patent right or other rights of other before the registration has been irrevocably upheld by the court decision after registration”, in order to make it clear that for a trademark registration application infringing other’s copyright, patent right or other rights, which is so irrevocably upheld by the court at the time before its registration, it could be invalidated under amended Article 50(1).  Also, even if it is so irrevocably upheld by the court at the time after its registration, it could be likely invalidated under the same article.

* Invulnerable Registration (Article 51)

According to Article 6bis(2) of the Paris Convention, the period for canceling or invalidating a mark, which is identical or similar to a famous trademark or mark and is likely to cause confusion and/or mistake to the relevant public is “at least” 5 years.

Under the current law, the invalidation proceedings must be initiated by two years from publication of the registration.  Nevertheless, a mark identical or similar to a registered trademark in identical or similar goods under the current law can be subject to invalidation through all its lifetime, i.e. 10 years.  These two provisions appear not that compatible, in view of the provision of Paris Convention. 

As is known, after registered to have been used for quite a few years, a trademark will build up its goodwill through the continuous use.  Such goodwill should be put in a state for protection.  For reaching a state of equilibrium between the original trademark rights owner and the new trademark applicant, the new law takes the 5-year period as justified.

The thoughts exercised in the preceding paragraph is also applicable to the situation where a trademark is irrevocably decided to have infringed other’s copyright, patent rights or other rights after registration.

An exception to the above is that a trademark registration violates the provision of amended Article 23(1)(12) and is secured through bad faith since the original intention of such registration is to prey benefits through unfair competition, as also outlined in Article 6bis(3) of Paris Convention.

* Invalidating Examiners (Article 53)

The amended law makes it clear that 3 invalidating examiners for examining the invalidation are selected from trademark examiners by the head of the trademark office.

* Results of Invalidation (Article 54)

Whether a trademark having violations against the law upon filing or being published for registration but having no violation upon examination of invalidation shall be cancelled shall be judged by the trademark-dedicated office through considerations of interests of the public and the party.  Such new provision is made reference to Article 50(2) of the German Trademark Law.

* Res Judicata of Invalidation (Article 55)

Amended Article 55 loosens the conditions for limiting the petition of an invalidation proceeding.  Specifically, the law no more requires that the decision or review for invalidation be irrevocable or final.  That is, the amended law stipulates that “after an invalidation application has been reviewed, any person may not petition for invalidation with the same fact, the same evidence and the same grounds.”  It is imaginable that a new invalidation proceeding with same fact, same evidence and same grounds as those of the original proceeding will only cause a waste of the administrative, including judicially administrative, resources.  Accordingly, such amendment is considered to be appropriate.

Nevertheless, it would appear to us that the conditions for limiting the petition of a new invalidation proceeding could be further loosened.  This is because according to the new law, even if the Trademark Office is reviewing the first invalidation proceeding, before it completes its review and renders its decision on the first invalidation proceeding, the Trademark Office has still the obligation to entertain a new invalidation proceeding with same fact, same evidence and same grounds in theory.  Nevertheless, since this new invalidation proceeding will never present any new legal environment or circumstance and any legally meaningful difference simply because whether it is petitioned before the Trademark Office has completed its review and rendered its decision on the first invalidation proceeding or not, it would appear that the amended law does not loosen the limitation to the enough or full extent.  Specifically, we might further amend the law into “after an invalidation application has been entertained, any person may not petition for invalidation with the same fact, the same evidence and the same grounds.”  Through such amendments, the core concerns of the present amendment can really find its final resolution.

* Registration Repeal (Article 57)

As is known, the Trademark Law is related to the public interests.  Accordingly, this article is provided to urge the registrant to properly use its trademark.  Thus, if there is violation against the law through use, any third party shall be eligible for petitioning repealing the registration in order to secure the public interests.  It is therefore that the limitation of qualification for repealing a registration by an interested party is removed.

In the past, whenever there are law-violating use or public interests considerations after the applicant has legally obtained the registration, another administrative action is used to “cancel” the original lawfully obtained trademark registration to “terminate” its effect.  Nevertheless, such concept should relate to “repeal” rather than “cancel” so that the terminology of “cancel” is used.

Under the current law, a trademark registration shall be repealed if the registrant licenses other person to use its trademark without recordal before the Trademark Office or does not rectify the situation of violating the provision of license notice after notified to do so in a prescribed period.  Such provision has been repealed since the new law takes that a license recordal could merely generate a locus standi status, which, however, relates to a private relationship by which it is improper for the law to impose the trademark rights owner the obligation for license recordal. 

Furthermore, repealing the trademark registration simply because the registrant does not rectify the situation of violating the provision of license notice after notified to do so in a prescribed period is also considered unduly by the amended law whose Articles 33(4) and 34 make them clear that the license recordal will be repealed if the license notice obligation is not followed and that license recordal repeal can alternatively be made ex officio by the Trademark Office.

Under the amended Article 57(1)(4), “the trademark having become the common mark, title or shape for designated goods or service” shall be repealed from registration, which is newly added through reference to Article 49 of German Trademark Law, Article 46 of UK Trademark Law and Article 14 of the US Trademark Law, since the trademark will have lost its distinctiveness.

Under the amended Article 57(1)(5), “the trademark likely causing the general public to mistake or misbelieve the nature, quality or place or origin of its goods or service in practical use” shall be repealed from registration, which is newly added through reference to Article 51 of Japan Trademark Law, and various Articles in different countries mentioned in the preceding paragraph, in order to safeguard the registered trademark from adversely affecting the transaction order through improper use.

The amended Article 57(1)(6) also makes it clear that “the trademark having been irrevocably adjudged to infringe upon copyright, patent right or other rights of other as a result of use” shall be repealed from registration.

The amended Article 57(2) also makes it clear that “the provision shall apply if the trademark rights owner explicitly knows or may somehow know an action of a licensee under the first Item of the preceding paragraph but expresses no objection thereto” in order to curb the violating use.

The newly added Article 57(3) makes it clear that “upon being petitioned for being repealed through a case provided in Item 2 of the first paragraph (i.e. the trademark having not been used or having stopped using for 3 full years), the registration shall not be repealed if the registered trademark has been used (since the situation has been changed), except the use begins in three months prior to the repeal petition through the knowledge that other will petition the repeal,” through the reference of Article 49(1) of German Trademark Law and Article 50(3) of Japan Trademark Law.

Also, the newly added Article 57(4) makes it clear that “where the cause for repeal only exists against partial goods or services designated to be used by a registered trademark, the registration may be repealed in respect of said partial goods or service.”

* Trademark Use (Article 58)

Under the amended Article 6, the use of a registered trademark must enable the domestic consumers to identify it is a registered trademark.  Nevertheless, the newly added Article 58 makes it clear that the following modes of uses are regarded as use of a trademark:

1. Although the trademark rights owner should use its registered trademark according to what it has sought registered, in practical use, the size, proportion or type are often modified as the case may be.  Accordingly, if after such modification, the trademark is recognized as the same identity of the registered trademark according to the general social concept, it should be regarded as the use of the registered trademark;

2. Goods which are dedicated to be exported might not be recognized by the domestic consumers although its registered trademark does be used somehow.  Accordingly, Article 58(2) makes it clear that “indicating the registered trademark on goods for the export purpose or its relevant object” will be regarded as use of the registered trademark.

* Infringement on Trademark Rights (Article 62)

Trademark infringement disputes caused through using words in a registered trademark as the company name, trade name, domain name or other mark distinguishing business identity or origin are getting more and more frequent recently.  It is thus compulsory to make it clear what modes of trademark rights infringement are?  Since such modes of infringement are presumed or simulated, requirements therefore must be especially strict, which is substantiated by the provision that there must be the occurrence of “abatement” (i.e. dilution) or “confusing misbelief”, which is different from the requirement of constituting a status of being “likely to confusingly misbelieve”.  Specifically:

1.          For a famous trademark: Using an identical or similar trademark with express knowledge of a famous registered trademark of other, thereby abating distinctiveness or reputation of the famous trademark will be regarded as infringement in order to protect the famous trademark.

2.          For a registered trademark: With express knowledge of a registered trademark of other, using the word in said trademark, thereby causing the relevant consumer in respect of goods or service to confuse or mistake will be regarded as trademark infringement.  It is to be noted here that “causing the relevant consumer in respect of goods or service to confuse or mistake” for a registered trademark is required in comparison to “abating distinctiveness or reputation” of the famous trademark.

* Customs Practices (Article 65)

This article is newly added in order to enhance the protection of the trademark rights through practicing or enforcing provisions of border regulation measures for infringing trademark rights goods in Articles 51 through 60 of TRIPs.  This article makes reference to Article 90bis of Copyright Law.

With reference to Article 51 of TRIPs, the first paragraph provides that the trademark rights owner can petition the customs to seize the infringing goods for preventing damages caused by the input or output of the infringing goods through the border.

Through reference of Articles 51 through 53 of TRIPs and consideration of interests and equity of petitioner and the seized party, the second paragraph provides the procedures and surety or guaranty involved in upon petitioning before the customs.

With reference to Articles 52 and 54, the third paragraph provides the notifying obligation of the customs after having entertained the petition and practiced the seizure.

The seizure made by the customs is legislated to cope with the urgency of exercising preventive rights from infringement by the trademark rights owner rather than the judgment of the substantive contents as to whether the seized goods are exactly the infringing articles.  With reference to Articles 527 and 530(2) of Code of Civil Proceedings which provide that the debtor can petition to cancel the provisional seizure after depositing a bond and Article 530 of Code of Civil Proceedings which provides that the debtor can petition to cancel the provisional measure after depositing a bond if there is a special situation, the fourth paragraph provides “the owner of seized goods may deposit bond doubling that in the second paragraph or appropriate guarantee to petition the customs repealing the seizure” by which the petitioner is guaranteed when the debtor finally loses the litigation.  This is because after the seized party loses the case, the trademark rights owner can claim damages under the current Article 61 of the Trademark Law to have an amount, as stipulated in the current Article 66, which might be far more the value of the seized goods.  Accordingly, without an appropriate guarantee from the seized party who might escape or cause its assets stripped in the future, damages therefrom will not be secured.  The fourth paragraph so tries to reach an equity between the bond amount provided by the seized party and the rights of the seizing party.

With reference to Article 57 of TRIPs, the fifth paragraph makes it clear that “the customs may grant inspection on the seized goods upon petition by petitioner or owner of the seized goods under the conditions not to damage the confidential data protection of seized goods” in order that the seizing and seized parties can get access to the situations of seized goods for further claiming the rights against the seized goods.

The sixth paragraph provides who should bear container demurrage, warehouse rent, loading/unloading fee and relevant expenses of seized goods.

* Seizure Repeal (Article 66)

This article is also newly added according to various actions for claiming rights made between parties with reference to Article 55 of TRIPs.  The first paragraph provides when the customs shall repeal a seizure.  Specifically:

1. Items 1 through 3 provide the possible outcomes in various stages of the litigation proceedings, which will affect interests of both parties;

2. Item 4 makes it clear that the seizure should be repealed if the seizure-petitioner so petition;

3. Items 5 makes it clear that the seizure should be repealed if the seized party has duly proposed a counter bond for safeguarding interests of the seized party since the interests of seizing party has been secured.

With reference to Article 55 of TRIPs providing a term of 10 working days, the second paragraph provides that the term provided in Item 1 of the first paragraph can be extended by the customs as the case may be.  In order to be clear in practice in this country for the customs, the term is set to be 12 calendar days.

* Damages for Goods Being Seized (Article 67)

This article is also newly added in order to make it clear that after the seized goods are decided not to be infringing, the seizure-petitioner shall compensate damages caused by the seizure to the seized party.  With reference to the provision of the latter paragraph of Article 531 of Code of Civil Proceedings, the first paragraph stipulates that compensations from the petitioner shall cover damages caused through providing bond to the seized party.

The proposed bond in the amended Article 65(2) is to guarantee the seized party from damages caused by seizure or provision of counter bond while the bond in the amended Article 65(4) is to guarantee the seizing party from damages caused by the seizure repeal through provision of counter bond from the seized party.  With reference to Article 103(1) of Code of Civil Proceedings, the second paragraph stipulates that the favorable party to either of the above two bonds has identical rights as a pledgee.

The latter paragraph of the second paragraph also makes it clear that “container demurrage, warehouse rent, loading/unloading fee and relevant expenses provided in the fourth paragraph of the preceding article and the sixth paragraph of Article 65 shall be compensated prior to the loss of petitioner or owner of the seized goods” since all these necessary expenses relate to necessitated beneficial expenses upon claiming rights under the legal procedure.

The third and fourth paragraphs provide at which circumstances the relevant party can petition the return of the involved bond.

* Certification Mark (Article 72)

For implementing the provision of Article 22 of TRIPs relating to protection of geographical indication, the certification mark for place of origin is included in this article for application with reference to Article 126 of German Trademark Law and Article 4 of the US Trademark Law.

The paragraph 3 also makes it clear that “an applicant in the preceding paragraph engaging in the business of goods or service to be certified shall not apply for registration.”

* Collective Trademark (Article 76)

This article is newly added.  One of the objects of the Trademark Law is to prevent the production of the likeliness of confusion or mistake of a mark when used in the economic activity.  With reference to the foreign legislations, except the collective trademark for distinguishing an organization or its membership, the first paragraph stipulates that an organization desiring to exclusively use a mark for distinguishing goods or service provided by a member of said organization apply for registration of a collective trademark according to the class covering the provided goods or service.  For example, any association, club or other organization having a juristic person qualification desires to sell a certain goods or provide educating or training service, which can only be sold or provided by its member, to be thereby differentiated from goods or service provided by other may apply for registration of a collective trademark.

* Improper Use of Special Marks (Article 79)

The second paragraph is newly added in order to make it clear what are improper uses of special marks, i.e. certification mark, collective mark and collective trademark, which will cause these special marks to be repealed.  Specifically:

1. Through Item 1, it is made clear to be improper use if the certification mark is used as a trademark or indicated on relevant article or document of goods or service of the certification mark rights owner, by which the function of the certification mark is damaged, since the function of a certification mark is to prove other’s goods or service has a certain quality or characteristic.

2. Through Item 2, it is regarded as improper use to harm the public under the circumstance “where the use of collective mark or collective trademark results in misbelief of the social public in nature of said organization.”

3. Through Item 3, it will be taken as improper use under the case “where transference, license or establishment of pledge is made in violation of provision of the preceding article” since special marks have a strong nature of public interests.

4. Through Item 4, it is considered as improper use in the case “where use regulations of the mark are violated.”

5. Through Item 5, it is assumed to be improper use in the general case “where there is a use of other inappropriate means.”

* Transition Provisions (Articles 84 ~ 92)

Generally speaking, transition provisions include the following:

1. The second installment of registration fee after registration of the trademark under the amended Article 26 is inapplicable to trademarks registered before the enforcement of this amended law;

2. Registered and pending service marks (or applications) will be respectively regarded as registered and pending trademarks (or applications) effective from the enforcement date of this amended law since the service mark category has been abolished.

3. Registered and pending associated trademarks or service marks (or applications) will be respectively regarded as registered and pending independent trademarks or service marks (or applications) effective from the enforcement date of this amended law since the associated trademark or service mark category has been abolished.  Furthermore, any of the pending ones can be withdrawn with refund.

4. Registered and pending defensive trademarks or service marks (or applications) will be respectively regarded as registered and pending independent trademarks or service marks upon petition (or applications) effective from the enforcement date of this amended law since the defensive trademark or service mark category will be finally abolished.  Again, any of the pending ones can be withdrawn with refund.

5. A registered trademark could be repealed if having never been put into use or having stopped using for 3 entire years.  For associated or defensive trademark or service mark, this 3 year should be re-calculated from the date on which they are changed into an independent one.

6. Applications allowed before but not yet registered or cancelled before but successfully irrevocably caused to be registered until or after the enforcement date of this amended law will be assumed having paid the first installment of registration fee under the amended law since the first installment of registration fee is equal to the difference between the filing fees under the current and amended laws.

7. Oppositions instituted before the enforcement date of the amended law will be maintained only when the involved applications contain violating causes both under the current law and the amended law in order to arrive at the goal of the amended law.  As to the procedures to which oppositions should follow, the amended law shall apply.

8. The principles disclosed in the preceding paragraph shall apply to invalidations against trademarks, certification marks or collective marks after the enforcement date of the amended law.  For example, while a trademark cannot be registered if using other’s company name and designating to be used in goods covered in the business scope of said other’s company under Article 37(11) of the current law, it is not prohibited under Article 23(1)(16) of the amended law unless said company name is famous and the use of the trademark is likely to cause of the general public and the company.  Specifically, if the company name is not famous or there is no likeliness of confusion or misbelief even if the designated goods or services are covered in the business scope of the company, invalidations will be dismissed.

9. The procedures for cancellations under the current law should be handled according those for repeals.

* Effective date (Article 94)

Since the amended law adopts multiple-class filing system, the post-registration opposition system, new payment methods for the registration fees…etc. are all new systems which need be duly announced to and adapted by the applicant and regulations about relevant operational procedures and official fees take time to be prepared, the enforcement date is set to be 6 months after the promulgation date, i.e. November 28, 2003.

Claims We Have

1. Although a tide needs not necessarily be ‘correct’ from the historical viewpoint after some decades or hundreds of years, people in the tide often cannot stay away from the tide but join and temporarily enjoy in or suffer from the process in the tide.  It is not known whether chasing the establishment of the electronic environment is so related?

2. When one’s own practice is significantly different from that or those adopted by many countries, it normally means it is stubborn and should try to adapt itself to the common practice.  Perhaps, one application with multiple classes might be a good example to this effect;

3. Civilized and advanced legislation should be one that allows people to lead an easy life but not one which allows people to disgrace the law or gradually smother the justice;

4. Law amendments are necessary to reflect the progressiveness of the society and/or the refinement of the legislation.  Nevertheless, it is believed and found:

A. The law amendment in a certain period or time is not necessarily the optimum or final version to the relevant provision;

B. The person who is in charge of or monitors the law amendment might not be the one who is most familiar with the legal environment pertaining to the article to be amended or most suitable to propose the law amendment;

C. It should be through the above thoughts that every law amendment normally is accompanied by a public hearing in order to invite opinions from the involved public for reference in proposing the law amendment;

D. It is, however, quite possible that some one who is not in charge of the law amendment but has the best vision or idea as to how the law amendment should be made is not present in the hearing for addressing his or her opinions about how the amendment should be made in order the law amendment can be more perfect;

E. Accordingly, our concerns should have been made clear to be that how to summon proper authoritative opinions in the respective field of the provision to be amended in the hearing is a great subject and challenge and should be carefully taken care of;

F. While we do not have good ideas as to how our concerns can be achieved, we would like to conclude and believe that the more incentives we put in causing the involved public, especially the authoritative opinions source to attend the hearing, the more success or optimum of the law amendment will be.

5. Famous trademarks need be protected.  For a trademark to be famous, there are lots of variables and parameters.  There is a might-be joking truth that counterfeits have a quality better than that of genuine ones sometimes.  It might be considerable that the laws impose some regulations as to price and quality of goods of famous trademark to reach an equilibrium between benefits of the trademark owner and the general public.

While law amendments cannot be avoided, it appears that frequent amendments are not good either viewed from any aspect although we are not so sure.