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A door opens: alternative remedies in Taiwan trademark squatting cases

by Gary Kuo

In cases involving trademark squatters, the main remedies available to brand owners are filing an invalidation or opposition action against the squatter with the Taiwan Intellectual Property Office (“TIPO”) in an attempt to cancel or revoke the registration.

However, the statute of limitations bars a brand owner from filing an invalidation or opposition if five years have elapsed since registration of the mark. It is often the case that a brand owner does not discover the squatted mark soon enough and it is left without an administrative remedy.

A relatively recent judgment (2014) issued by the Taiwan Intellectual Property Court (the “IP Court”) held that Taiwan’s Civil Code and Fair Trade Act provide causes of action sounding in tort against a person who registers a trademark in bad faith. Min Gong Su Zi No, 5 (102). While the judgment does not create a precedent and was not appealed, it is significant because the statute of limitations in a tort action is two years from discovery of the harm or ten years from the time of the injury.

In other words, the door is open to seek alternative relief under the Civil Code and Fair Trade Act  even after the statute of limitations for an invalidation or cancellation has run.

In the instant case, a mark was registered in Taiwan and 16 other  jurisdictions despite having been registered for decades in leading European and North American jurisdictions. This conduct was held to be a intentional tort offending against good morals (Civil Code §184(1)) because it violated the Fair Trade Act’s catch-all prohibition against deceptive or obviously unfair conduct that interferes with the proper functioning of the market (Fair Trade Act §25).

The IP Court held that “the filing of these applications (by the Defendant) seems an attempt to free ride on the hard-won reputation of the Plaintiff’s mark for economic benefit and thus has adversely affected the trading order. This conduct violates business competition ethics and constitute violations of Article 24 of the Fair Trade Act.[1] The IP Court further held that the Defendant’s prior knowledge of the brand, and the effort and resources spent by the Plaintiff in attempting to cancel the registrations in multiple jurisdictions constituted dishonest commercial practice that caused the Plaintiff to suffer economic injury.

As a result, the IP Court awarded the plaintiff brand owner compensatory damages and issued an order directing the defendant to abandon its rights to the mark in Taiwan.

For more information on trademark enforcement matters in Taiwan, please contact Gary Kuo at gkuo@winklerpartners.com or +886 223112345 ext. 534.


[1] After February 2015 amendments to the FTA, Article 24 became Article 25.

 

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