An Alleged Infringing Company Name Shall Be Changed as Ordered in Accordance with the Proposed Company Act Amendment.

　Trademark infringement is an increasingly common occurrence; one of the cases is that the Chinese company name of Intel, “英特爾”, is misused by a Taiwanese company, in which case the judge decided in favor of Intel, while the infringer refused to change company name registration.  In view of such circumstance, the Ministry of Economic Affairs proposed a draft amendment to the Taiwan Company Act to contain new provisions that entitle the Ministry of Economic Affairs to demand the infringer to dissolve his/her company or change company name where the judge finds in favor of the aggrieved party whose well-known trademark is infringed. 

　The Taiwan Intellectual Property Office (TIPO) on 14 March 2008 hosted a forum on “Legal Remedies Sought for Well-Known Trademark and Trade Dress”.  In this forum, Commerce Department of the Ministry of Economic Affairs explicated that the Taiwan Trademark Act provides no relevant provisions that the owner of a well-known trademark or trade dress can legally demand an infringer who infringes upon his/her trademark or trade dress in company name or trade name to do company name change even when a judgment is entered in favor of the owner but the infringer refuses to change company name registration.  To fully expedite and actualize IP protection, the amendment to the Company Act will add a circumstance in Article 10 thereof where the competent authority can order dissolution of a company confirmed to be involved in infringement occurrence.

　The Director of TIPO, Ms. WANG Mei-Hua indicated that TIPO will compile all well-known trademarks into a database as a reference for Commerce Department to examine any application for company registration to avoid the circumstance where a proposed company name is similar or identical to another person’s registered marks.

　With respect to the overlapping regulations of civil remedy and criminal penalty provided by the Trademark Act and Article 20 and Article 24 of the Taiwan Fair Trade Act, the Fair Trade Commission (“FTC”) representative reiterated in the forum that the FTC will not intervene in any infringement cases pursuant to Paragraph 1, Article 26 of the Administrative Penalty Act stipulating that the criminal law shall prevail over administrative law if one and single act constitutes criminal offense or breaches administrative duty simultaneously, and will leave such cases to the TIPO’s handling where a registered trademark is infringed and the infringement involves the application of criminal liabilities as prescribed by Article 81 of the Trademark Act.

　Interchange Association, Japan and European Chamber of Commerce Taipei expressed their major concern about if the protection on well-known trademarks and trade dress is to be removed from the amendment to the Fair Trade Act.  The FTC expressed that the amendment may either remove the relevant administrative liabilities currently provided in the Fair Trade Act to maintain the regulation concerning civil damages or remove the protection on well-known trademark or trade dress to leave it subject to the Trademark Act.  The FTC, however, has not put forth a final decision on this issue.  (2008.03)

/CCS