"*~FAQs for Trademark, Domain Name, Package and Company Name~*"

Protection for Package of Product

With regard to the package(s) of the products, it/they could be protected under the Fair Trade Law. According to the Article 20(1) of the Fair Trade Law, it will be illegal if the goods or services provided by the business have the use identical to or similar with the other’s name, store/shop or company name, trademark, goods’ container, package, appearance or the other symbol identifying other’s goods, which related businesses or consumers are commonly aware of, to cause confusion with the other’s goods. It will be also illegal to sell, transport, export or import the aforesaid goods. Thus, it will be important for the client to prove the fact that the package/container with the specific goods has been well-known to the general public or the relevant businesses here through, e.g. the market investigation/survey, selling amount/advertisement cost statistics… when an infringement is to be pursued.

Protections for Stylized Trademark

If a client is most likely to use various forms of or make slight symbolic modifications for certain “word/letters” or other images in a trademark in use, it is preferred for the Applicant to file basic trademark registration application for the typed letters or basic device on which various diversifications therefrom might be based since, taking a stylized word mark as an example, it will inevitably be presented in a different form when used in printed or general written materials for depicting goods manufactured by the Client, in addition to the one which is preferred at a specific time, in order to give the client a broader protection.

In addition, under our trademark practice, several similar images in an application are not allowed. Further, it is advisable that we file a trademark application for the client’s logo, words and design respectively, if an intended important trademark contains the logo, word and design, in order to offer as much protection to an important trademark.

Trademark Search Notes

1 This trademark search has been conducted through trademarks and trademark applications which include words, letters, device, logo or numerals and which are on a database compiled by the ROC (Taiwan) IPO. The marks are on the database as registered marks or as the subjects of applications compiled no later than the search date. Please note that there could be minor potential inaccuracies in the database.

2 This search certainly will not cover applications which were filed shortly before or after the search date but based on or claiming priorities from corresponding foreign applications, which will have as their effective filing dates the dates of filing the corresponding foreign applications. An updated search may be needed to carry out search covering these unsearched periods. A further search should also be conducted if there is a significant delay between this search and an actual application to register the proposed mark.

3. When considering the results of the search, the client should consider whether there are any other parties that might already have used a trademark similar to the proposed mark in a related field. Such use might give rise to enforceable rights in some countries, even without a trademark registration, and thus could prevent use of the proposed mark. Furthermore, rights can exist in a trademark that is well known, in Taiwan or abroad, in respect of goods or services not related to those on which the mark has been used. Infringement problems could therefore arise if the searched mark is similar to such a well known mark.

4. If the client is aware of trademarks which are in use in the relevant commercial field and which have not been located in this search, please consider initiating further investigation. The client is urged to pay attention toward any trademarks which have been located in the search but appear in opinions of the client to be relevant or even more relevant than what we have commented on in our letter. Inviting our comments in these respects is highly recommendable.

Famous Trademark

Unless the famous trademark (not having been registered) owner can submit a powerful evidence for clarifying a cited trademark is identical or similar to its earlier used trademark on identical or similar goods where the registrant retains contract, place connection, business dealing or other relation with the famous trademark owner to know existence of its trademark without its consent, the prior registrant could interfere with the use of the famous trademark owner.

Specifically, if the Client’s mark is regarded as “well-known”, it will be possible to oppose the cited mark according to the Article 23(1)(12) of Trademark Law, which stipulates that “No registration may be made for a trademark if it is identical or similar to another person’s famous trademark or mark, thus likely causing the public to confuse or mistake or abating distinctiveness or reputation of famous trademark or mark provided that this shall not apply subject to consent from trademark or mark owner to apply for registration.”

It will be necessary to succeed in the above-mentioned cancellation by certifying the client’s mark is a well-known trademark by submitting the concrete evidences, e.g. the list of trademark registrations and/or applications in various countries, the history relating to the trademark and its selling information of the goods/products...in Taiwan.