Trademark

I.   Revised Examination Criteria on Likelihood of Confusion Announced on TIPO   Website

Referring   to the examination guidelines of the EUIPO, JPO, the USPTO, and the judicial   practice of Taiwan, TIPO has revised the Examination Criteria on Likelihood   of Confusion in order to provide trademark examiners with more specific   guidelines on the evaluation of the likelihood of confusion when examining   trademark applications. It was published and entered into effect on October   27, 2021.

1. The Similarity of Trademarks:

The   revision has instituted the principles for the evaluation of the degree of   distinctiveness of trademark elements, assessment of each trademark as a   whole, facilitation of comparisons between individual parts of compound word   marks, and judgment of the similarity between existing words/phrases and   phonetic characters, and largely provide with examples.

2. The Similarity of Goods and Services:

A   new criterion “channels of distribution or points of sale” was added in the   list of determining factors for the degree of similarities between goods and   services. The definitions of goods/services that are considered in   competition, complementary, or auxiliary/ancillary in relation to specific   other goods or services. Furthermore, there were supplemental information   concerning the relationships between the goods and their components, raw   materials, or semi-finished products, respectively, in the revision. The   examples and applicable situations of aforesaid factors were mentioned   therein.

3. Other Minor Changes:

Some   determining factors were altered, such as whether the trademark applicant   possesses a bona fide intent, whether the business of the proprietor of the   earlier registered trademark pursues a diversification strategy, and the   qualifying factors for being "obviously improper," part of the   proviso of Subparagraph 10, Paragraph 1, Article 30 of the Trademark Act.

Publication   Date : 2021-12-23

Source:   https://www.tipo.gov.tw/en/cp-282-900609-14775-2.html

General

I.   Introduction to the license recordation system of intellectual property   rights in Taiwan

The   law divides the license of intellectual property rights into "exclusive   license" and "non-exclusive license" in Taiwan.

Exclusive   license" is completely monopolized, and even the licensor is excluded   from the scope of exercise (Article 62(3) of the Patent Act, Article 39(5) of   the Trademark Act, and Article 37(4) of the Copyright Act). Only the   exclusive licensee can exercise the intellectual property right, and also   license others to implement it. When the rights are infringed, the exclusive   licensee can also file a lawsuit in his own name.

Non-exclusive   license” is not monopolized. The licenser can exercise the rights himself or   license others to do so. Non-exclusive licensees have only the right of use,   not the right of exclusivity. In principle, the right to use cannot be   transferred to a third party for exercise (Article 63(2) of the Patent Act,   Article 40(2) of the Trademark Act, and Article 37(3) of the Copyright Act).   Because the non-exclusive license has no right of exclusivity, even if a   third party infringes the intellectual property right, the non-exclusive   licensee cannot file a lawsuit in his own name.

"Sole   license" is another common type of license in the market, but there is   no provision about "sole license" in the Act. Thus, it refers to   the basic principle of Civil Law: Article 98 “ In the interpretation of an   expression of intent, the real intention of the parties must be sought rather   than the literal meaning of the words.

Generally,   people hold the opinion that the literal meaning of "sole license"   implies "the licensor shall not sub-license to a third party".   Therefore, in principle, a “sole license” could belong to a non-exclusive   license, so the licensor of sole license can exercise the rights himself, but   cannot license a third party to exercise it.

Any   changes in trademark and patent rights are subject to the stipulation that   "It should not be a valid defense against any third party, unless it has   been registered with the Authority  concerned." (Article 62(1) of   the Patent Act, Articles 39(2),42 and 44(1) of the Trademark Act). This is   called "the doctrine of registration antagonism”. An unregistered contract   of license only has the effect of creditor's rights and can only be used   against a party  to a contract. If the licenser transfers the rights to   a third party, and the third party later refuses to recognize the license   contract, the licensee can only claim damages from the original licenser. The   registered contract of license is effective against a third party, and the   assignee of the right must accept the license contract (Article 62(2) of the   Patent Act, Article 39(3) of the Trademark Act) .

It   is noteworthy that the majority of the TIPO and the Court hold the opinion   that the legislative purpose of the system of registration antagonism   consists in protecting the transaction order, so a "third party"   here is limited to the third party who conducts the transaction, excluding   infringers. However, even if the license contract is not registered, the   exclusive licensee can still file a lawsuit against the infringer, and the   infringer cannot use "the exclusive license is not registered" as a   defense. On the other hand, for a non-exclusive licensee, it has nothing to   do with whether it is registered or not because a non-exclusive licensee   cannot file a lawsuit in his own name.

Unlike   patent rights and trademark rights, the Copyright Act in Taiwan adopts the   principle of creation protection. The author of a work shall enjoy copyright   upon completion of the work. It does not need to be registered. Under this   premise, the license of copyright is not applicable to the doctrine of   registration antagonism. In order to solve the issue of whether a contract of   copyright license can be against a third party, the Article 37(2) of the   Copyright Act stipulates that "The license referred to in the preceding   paragraph shall not be affected by subsequent assignment or further licensing   of economic rights by the economic rights holder." That is, after the   economic rights of copyright are assigned or exclusively licensed to a third   party, the third party must bear the previous license contract and cannot   prohibit the previous licensee from exercising the rights. If the owner of   the economic rights copyright fails to inform the third party of the   existence of the prior license contract during the transaction, it may   constitute a breach of contract and cause the compensation of damages.   However, such legislation greatly increases the uncertainty of the   transaction of the economic rights since the third party has no way to know   the license status of the economic rights before the transaction, but must   accept all the license contracts in general.