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.
Massachusetts Institute of Technology (MIT) have released their list of the world’s 50 smartest companies for 2014. Ranked for their innovation and leading position in their respective industries, some of the companies are household brands, while others are known for their pioneering research in genome sequencing, clean energy and biotech. Of the fifty selected by MIT, Winkler Partners represents eleven, including three of the top five companies.
MIT Technology Review Deputy Editor Brian Bergstein notes that companies were chosen for their ability to commercialize innovative technology, or their disruptive effect on markets. Our clients on the list include front runners in the automotive and transport sectors, providers of Internet and software services, as well as consumer electronics brands. Our work for them includes many IP matters, Taiwan litigation, and corporate matters.
In MIT’s 2013 list (named 50 Disruptive Companies), a total of thirteen Winkler Partner clients were named. Bergstein notes that many of the companies on the 2014 list are not necessarily known by a wide audience, but rather operate in sectors where important innovations are taking place.
You can read about all the companies on MIT’s 2014 list here.
Taiwan’s Workforce Development Agency has released a list of documents it will accept from employers to show they qualify under the new Headstart Taiwan program to hire foreign employees without being subject to minimum experience or capital/revenue requirements. To qualify, companies that are registered less than five years must meet one of the following criteria and provide documentation in order to qualify:
1. Received NT$2 million or more in venture capital
- Venture Capital Enterprise (Update) Registration Form (or evidence of lawful incorporation) or,
- Statement of Shareholders’ Capital Contributions in Cash, issued by the competent authority for company registration within 2 months of application date (XX Venture Capital Inc. should appear in the Shareholder Roster) or,
- Foreign investment approval from the competent authority or its agent (the approved lines of business should include venture capital investments)
2. Registered on the Go Incubation Board for Startup and Acceleration Firms (GISA) with the Taipei Exchange
- Approval to list on the Go Incubation Board for Startup and Acceleration Firms (GISA), issued by the Taipei Exchange
3. Granted an invention patent in Taiwan, or had a patent assigned or licensed to exploit by a Taiwanese invention patent holder that is registered with the Taiwan Intellectual Property Office (TIPO)
- Taiwan Invention Patent Certificate or,
- Approval letter to record invention patent assignment or license issued by the Taiwan Intellectual Property Office, Ministry of Economic Affairs
4. Joined an incubator
- Lease agreement with qualifying incubator programs (for a list of qualifying incubators click here)
5. Won awards in recognized entrepreneurial or design competitions
- Certificate from qualifying entrepreneurial or design competitions (for a list of qualifying competitions click here)
In addition to meeting one of the above criteria, all qualified Headstart Taiwan employers must also provide either a Company Registration Certificate or a Business Registration Transcript when applying for employee work permits.
Employees and managers are treated differently for work permit purposes. An ordinary foreign-invested business can obtain a single work permit for a foreign national manager if the business has at least NT$500,000 in capital at registration and NT$3 million in revenue after its first year of operation. These capital/revenue requirements are lower than those for foreign employees (NT$5 million/NT$10 million). Taiwan’s National Development Council has announced that Taiwan will grant up to 2,000 entrepreneur visas starting in July 2015. While the requirements for obtaining and extending an entrepreneur visa have not been announced, the program is intended to allow startups to have multiple foreign managers or executives in addition to foreign national employees.
Winkler Partners welcomes Roxana Cheng.
Roxana joins our corporate team from Moreno Baldivieso Estudio de Abogados, one of Bolivia’s leading law firms, where she worked on international investments, government infrastructure projects and general commercial transactions with a range of clients from Korea, Latin America, the United States and Europe. At Winkler Partners, she will continue to focus on cross-border transactions and advise clients from Spanish-speaking countries.
Roxana is admitted to practice in the Commonwealth of Massachusetts. She holds a B.A. from the University of Massachusetts, and a J.D. from Northeastern University School of Law. Roxana is fluent in English, Spanish, and Mandarin Chinese. You can read Roxana’s full profile here.
Taiwan’s Intellectual Property Office (TIPO) has released IP registration figures and trends for the first quarter of 2015.
A total of 17,221 new patent applications were made, an increase over the first quarter of 2014 of 11.88%. There were a total of 3,967 invention patent applications originating in Taiwan and 6,558 originating abroad, a decrease of 12% year on year. The top foreign patent applicants were Intel (173 applications), Toshiba (158) and Tokyo Electron Taiwan (120). The TIPO also notes that while overall applications by Hon Hai Precision Industry Co. (the single largest patent applicant in the country) have decreased, Hon Hai’s applications for Internet of Things and cloud technologies have increased.
In addition, the TIPO received 17,379 trademark applications, and while applications originating in Taiwan decreased by 3.23%, foreign applications increased by 6.62% over the same period last year. The largest number of foreign applications came from the United States (888), China (847) and Japan (801). Applications from China increased 50.71% over the same period last year, a trend the TIPO notes has continued for the last four quarters.
The full report is available on the TIPO’s website in Chinese here.
According to reports in the Chinese language media, National Development Council (NDC) Minister Woody Duh has announced that Taiwan will begin issuing entrepreneurial visas to foreign nationals from July, in a bid to attract talent, strengthen Taiwan’s startup ecosystem and create jobs.
2,000 visas a year will be available to foreign nationals (including nationals of Hong Kong and Macau), which come with one year of residence. Extensions of a further two years are available to those entrepreneurs who can provide evidence of operating a bona fide business, such as registering a business or generating revenue. Entrepreneurs who lawfully reside in Taiwan for five years are then eligible for permanent residency.
The report notes that other countries such as Chile, South Korea, Canada, Singapore and the UK have issued similar plans. The NDC has been charged with developing Taiwan’s startup ecosystem under the Headstart Taiwan project, with the aim to assist entrepreneurs through deregulation, attracting investment and developing startup clusters, most notably Taiwan Startup Stadium. For more on the Headstart Taiwan project please visit the NDC’s website.