We recently welcomed two new additions to our growing corporate practice.
Ling-ying Hsu has experience both in a professional firm and as in-house counsel, where she was charged with overseeing corporate governance, and the incorporation and dissolution of subsidiaries. Ling-ying also has considerable knowledge of licensing matters, particularly in the software and entertainment industries. Ling-ying obtained her LL.M. from the University of Illinois Urbana-Champaign and has been admitted to practice in Taiwan since 2000.
Teresa Wang joins Winkler Partners from a well-known international insurance firm, where she was employed as in-house counsel. She handled insurance claim disputes as well as compliance issues relating to Taiwan’s Personal Information Protection Act and the United States Foreign Account Tax Compliance Act (FATCA). Teresa will be concentrating on mergers, international investments, data protection and commercial dispute resolution. Teresa is a graduate of the Institute of Technology Law at National Chiao Tung University and has been licensed to practice in Taiwan since 2004.
Winkler Partners proudly cosponsored a mediation workshop entitled “The Heart of Conflict” in Taipei on 21-22 October 2015. The workshop explored using Nonviolent Communication (NVC) in the context of mediation and conflict resolution, and was led by certified NVC trainers Jim and Jori Manske of Hawaii, USA.
Eleven colleagues and friends of Winkler Partners took part in the workshop. Our cosponsors were the Zhi-Shan Foundation, the CP Yen Foundation, and Sister Rosanna Hung of the Good Shepherd Community in Taipei.
We encourage and assist our clients to pursue alternative dispute resolution methods such as mediation or arbitration when possible. Mediation, in particular, can often help disputing parties satisfy their needs in an efficient and amicable manner. For further information on our alternative dispute resolution services, all are welcome to contact Chen Hui-ling at +886 (0) 2311 2345 ext. 555.
Each year Interbrand releases a list of the most valuable brands in the world. Winkler Partners represents 25 of the brands that made the Best Global Brands 2015 list, 10 of which are in the top 25. Interbrand measures both company brand value and product brand value to compile its list.
Brands such as Facebook, whose value increased 54% year on year, and Amazon, whose rose 29%, show that increasingly, the brands with the most value are associated with technology and the Internet. The most valuable brand in the world is still Apple, which saw a 43% rise in its brand value over 2014. Social media, eCommerce, software and IT solution providers as well as familiar hardware manufacturers feature heavily in the list. Perhaps based on growing sales and brand recognition in markets such as China and East Asia, several luxury fashion brands have made the list, in particular Hermes, who saw its value rise by 22%.
Winkler Partners currently represents 25 of these top global brands of 2015, an increase from 18 in 2010. Brands that we have worked with are active in many fields, from fashion to software, beverages to media.
The full list of Best Global Brands 2015 can be found here.
Partner Peter Dernbach recently provided insight into Taiwan and Japan’s recent agreement to mutually recognize biological material deposits for patent prosecution purposes. In Asia IP’s August edition, Peter explains that the June launch of the “Cooperative Program on Mutual Recognition of Deposit of Biological Materials for the Purpose of Patent Procedure” agreement by the Japan Patent Office (JPO) and the Taiwan Intellectual Property Office (TIPO) means that applications that contain biological material deposits will now take less time, as previously this material was required to be submitted separately. Other benefits include lower costs and the recognition of material deposited in either country’s institutions. This makes duplicate deposits unnecessary.
Peter continues by noting, “A final benefit from the Taiwan side is that this agreement may pave the way for additional bilateral agreements with other leading patent offices. Given Taiwan’s unique political situation, it is not a member of the Budapest Treaty, or many other international conventions”.
The designated depository institutions are the Food Industry Research and Development Depository Institute (FIRDI) in Taiwan, and the International Patent Organism Depositary of the National Institute of Technology and Evaluation (NITE-IPOD) and the NITE Patent Microorganisms Depositary (NPMD) in Japan. Peter adds that barring a significant increase in workloads, additional institutions are unlikely to be added in the short term.
You can read the full article on the new patent application agreement here.
Partner Christine Chen will be speaking at the HR Connection event in Singapore on 8 September, hosted by UK-based law firm Taylor Vinters. The event will gather legal practitioners and human resource managers from across the Asia Pacific region to discuss employment-related topics that businesses and lawyers in the region contend with.
As head of our employment and immigration practice, Christine has previously contributed updates regarding Taiwan’s employment laws to newsletters detailing regulatory changes around the world, published quarterly by Taylor Vinters. During the event, Christine will be joining a panel discussing the localization of handbook material, across Asia and in Taiwan in particular. Her employment practice focuses on dispute resolution. She also advises a number of regional offices of multinationals on general Taiwan employment matters.
According to event information, HR Connection is designed for human resources professionals and in-house counsel managing labor forces on a multi-national scale, and will cover the legal, tax, and practical challenges that come with operating in Asia. To register, visit the Taylor Vinters page here.
In Taiwan, trademark protection is obtained through registration. The well-known name of an individual can, of course, be registered as a trademark and used as such in connection with the designated goods and services and preclude the unauthorized use of the same or similar famous name by another party. But what about the famous names of individuals that have not been registered as trademarks in Taiwan? Explicit protection is provided to famous names under Article 30 (1)(13) of Taiwan’s Trademark Act (the “Act”), which provides:
A trademark may not be registered in any of the following circumstances:
13. The trademark contains another person’s image or well-known name, stage name, pen name or pseudonym. This restriction shall not apply, however, if the other person has consented to the application for registration.
In determining whether a trademark is prevented from being registered under the Act on the basis of its similarity to a famous name, the Taiwan Intellectual Property Office (“the TIPO”) decides on a case-by-case basis whether
(a) the name is sufficiently well-known to the relevant consumers, and
(b) whether there is a likelihood of a mental association or confusion by the relevant consumers between the unauthorized mark and the famous name.
While the name must be well-known in Taiwan to be entitled to such protection, evidence to prove the name is famous from other jurisdictions can be provided to the TIPO to aid it in making its decision. Historically, the TIPO has required that the full name of the well-known person be used in order for Article 30 (1)(13) to apply. In some recent decisions, however, the TIPO has held that a mark that incorporates parts of well-known names can be denied registration on this basis, provided sufficient evidence can be produced to establish the two criteria above.
Is a Partial Name Sufficient for Protection under Article 30 (1)(13)?
In reviewing applications for trademark registration and deciding opposition actions, the TIPO will look to the inherent distinctiveness of the well-known name (or part thereof) as well as other factors to determine whether a likelihood of confusion or mental association may arise between the unauthorized registration containing the famous name and the famous name itself by the relevant consumers. Other provisions of the Act require that the mark for which registration is sought creates a likelihood of confusion or a likelihood of dilution in order for the registration to be denied. Article 30 (1)(13), in contrast, does not mention either of these factors as an explicit requirement. In practice, though, the TIPO requires evidence that there is a likelihood of a mental association being formed by the relevant consumers between the famous name and the unauthorized mark which uses all or part of the famous name.
One of the first instances where the TIPO recognized the ability for an abbreviated famous name to be protected was a trademark opposition case in 2005 relating to the name “Beckham (貝克漢)”. In that case, the TIPO canceled a trademark registration for the name “Beckham” on the basis that the purpose of this provision was to protect an individual’s inherent right to use of his or her own name and image, and to prevent a mental association being formed between the famous name and the unauthorized mark among the relevant consumers should the registration be allowed. The TIPO held that the name “Beckham”, despite being an abbreviation of the name “David Beckham (大衛貝克漢)”, was sufficiently globally-recognized and distinctive on its own so as to be afforded protection under the Act and therefore canceled the unauthorized mark. A similar case in 2006 by the TIPO involved the cancellation of the registered mark “Tomford” on the basis of its similarity to the name “Tom Ford”, the well-known American fashion designer. The TIPO again based its decision to cancel the registration on the need to protect an individual’s rights to his or her own image and name, and to avoid a mental association being formed between the famous name “Tom Ford” and the unauthorized registered mark “Tomford”.
In a more recent decision of the TIPO in 2014, which related to a well-known Japanese actress with the stage name “波多野結衣” (“Hatano Yui”), the TIPO held that incorporation of the name “波多野Hatano” into a trademark by another registrant who was not the individual or her authorized representative could be canceled. This decision is another instance where the TIPO has recognized that an abbreviated name can attract the protection of Article 30 (1)(13) of the Act. The TIPO expressly stated that Article 30 (1)(13) is aimed at protecting the rights of individuals to his or her own name or image, or the right of another person to register the individual’s name with express consent.
The above decisions show that the TIPO is willing to apply Article 30(1)(13) of the Act to protect well-known names from unauthorized use in trademarks by others even in cases where only part of the well-known name is used. Evidence will need to be adduced to establish that the name (in its entirety or the distinctive portion of the name), is well-known to the relevant consumers in Taiwan as the name of a famous individual. Evidence will also need to be submitted that shows the trademark creates a likelihood of a mental association being formed between the famous name and the unauthorized registration by the relevant consumers. Assuming that evidence supports these conclusions, the individual or their authorized agent can preclude others from registering a trademark that contains the well-known name under Article 30 (1)(13) of the Act.
 Trademark Opposition No. Zhong-Tai-Yi-G00930220: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=17407
 Trademark Opposition No. Zhong-Tai-Yi-G00940476: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=21673
 Trademark Opposition No. Zhong-Tai-Yi-G01020439: http://tmsearch.tipo.gov.tw/RAVS/wfm30203.jsp?bid=152290&rid=&Print=Y
The National Development Council and other agencies recently announced three planned measures to simplify procedures for foreign investors wishing to establish business entities in Taiwan.
1. A university may allow a startup to register its business address at a university incubator
A business in Taiwan must register the actual premises from which the business is conducted as its address. Universities however have been reluctant to allow startups to register their business addresses at university incubators because universities are in general not permitted to allow for-profit businesses to use university property.
As a solution, the NDC, the Ministry of Education and the tax authorities have reached a consensus that allowing universities to permit startups to register their businesses addresses at university-operated incubators serves policies to encourage academic-business cooperation. Consequently, a university incubator will be permitted to allow a student startup to register its business address at the incubator instead of having to make other arrangements such as leasing off-campus premises. It appears that student startups will include startups founded by non-degree students who take courses in entrepreneurship.
2. Foreign investors may appoint agents to open bank accounts and file for tax registration
Currently, a foreign investor must come to Taiwan to open corporate bank accounts and register for taxes in person. In many cases,the foreign investor must make two trips to Taiwan during the process. The NDC now plans to allow foreign investors to appoint an agent (typically a lawyer or an accountant) to open corporate bank accounts and file for tax registration on behalf of the foreign investor.
3. Foreign investors may appoint an agent to use the online company registration system without use of a digital certificate
The Ministry of Economic Affairs has created a one-stop website that investors can use for routine company filings including name reservation, incorporation, and business registration. To use the website, users must currently create a cumbersome digital certificate using a Chinese interface. To simplify use of the website, the Ministry of Economic Affairs has agreed that foreign investors will be permitted to authorize an agent to make routine filings on their behalf without the foreign investor’s having to obtain a digital certificate.
According to the NDC’s press release, these measures will be adopted in one month.
While all of these measure are steps in the right direction, allowing agents to open bank accounts and file for tax registration has the most potential to simplify the process of setting up a business in Taiwan for foreign investors.
Winkler Partners will be closed Friday, 10 July 2015 in accordance with the typhoon warning announced by the Taipei City Government. Please direct any urgent matters to email@example.com, which will be checked regularly.
All government agencies in Taipei City, New Taipei City, Keelung City, Taoyuan City and Lienchiang County (Matsu) will be closed on this date; any deadlines that fall on this date will automatically be extended to the next normal working day, Monday, 13 July 2015.
Partner Peter Dernbach was recently interviewed about 3D printing and its implications for intellectual rights holders, as well as the current state of trademark legislation in Taiwan, by Asia IP. In the May and June edition of Asia IP, Peter says that many of the industry’s key players hail from Taiwan and that Taiwan’s Premier has recently said that a plan will be developed to provide further support at the governmental level. From an intellectual property point of view, Peter notes that, “It will be important for industry groups to educate customers about potential risks in using 3D printers to produce items that look like the original goods, but may not share all of the same properties“.
In a further section titled Trademark Survey 2015, Peter notes that while Taiwan’s Trademark Act was last amended in 2012, some new administrative measures have recently been proposed. “The TIPO (Taiwan Intellectual Property Office) plans to make some administrative changes to further protect trademark owners’ rights. In March 2014, they announced that in order to protect rights, they would shorten the administrative remedial process by setting up a dedicated unit within the TIPO to handle objections, hear disputes and speed up the process from objection to ruling”.
Peter adds that the biggest challenge for trademark owners is the sale on counterfeits online. Meeting that challenge will require greater cooperation between Internet service providers, the IP police and parties which handle the financial transactions for those sites engaging in the sale and distribution of counterfeits. You can read the full article on 3D printing here.
Christine Chen, head of our employment and immigration practice, has contributed to the June edition of International Employment Law Update published by Taylor Vinters, a Cambridge, UK based law firm with offices in London and Singapore. The update includes employment law news from jurisdictions around the world and is targeted at human resources managers.
In the Taiwan section, Christine summarizes key changes in the provision of additional paid parental leave under the Employment Insurance Act (Article 19.2); as well as an increase in paternity leave from three days to five, provided for under an amendment in March of this year to the Gender Equality in Employment Act (Article 7).
Christine notes that the government is likely to continue updating and strengthening support for parents to help combat Taiwan’s rapidly aging society, making it easier for people to raise children, and that human resources managers in Taiwan should make note of the changes. You can read the section on Taiwan here.