India

India is in the midst of a deadly covid-19 crisis, yet rampant transformation and growth on several fronts of the legal sector can be seen. This article captures some of the changes surrounding process, functioning and services within the IP fraternity due to the pandemic. Businesses are shifting online. Mobility restrictions and safety precautions are keeping consumers at home. Fashion brands have held online shows, film producers and distributors have shifted to over-the-top (OTT) media services, and corporate brands have led their companies towards digitisation as soon as the pandemic affected their usual way of working.

Several goods and services traditionally not in the online model – such as pharmacies, consultations and eyewear – have all seen major sales online. Due to this paradigm shift in the preferred interaction channels of consumers and brands, the nature of the protection of brands has expanded substantially. As a result, the IP fraternity has seen expansions in filings due to the digital shift of brands, and additional enforcement mechanisms followed by these brands.

intermediary rules
Safir Anand
Senior Partner and Head of Trademarks, Contractual and Commercial IP
Anand and Anand in New Delhi

Tel: +91 120 405 9300
Email: safir@anandandanand.com

Risk of counterfeiting

The pandemic accelerated India’s e-commerce growth, largely in online models, and specifically with various delivery options seen throughout the past year. This sudden spurt in home-delivered goods and services has affected the demand for essential goods, medical supplies, and even luxury goods in some cases.

With consumers not doing physical shopping, issues with counterfeit goods available on online portals were faced by numerous brands. Infringers and counterfeiters were actively scamming consumers through online channels by marketing branded goods and selling cheap and fake products. While this most certainly affected consumers, the burden of intermediaries to try and regulate such activities came to the forefront, especially in cases of spurious goods that may affect one’s health and safety.

Brand registries

The brand registry is essential in online delivery business models where the intermediaries use their resources for such services. With a duty to prevent counterfeiting and deceit, the liability of intermediaries has certainly increased, and robust mechanisms such as Amazon’s brand registry were brought in as a way to protect brands and give them direct control of their products online. Without the option of physical market enforcement, mechanisms such as these can provide much-needed assistance to brands and consumers.

As both counterfeiters and original brands sell their products online, the enforcement battle between the two brings the accepted position of trademark law into the picture, with age-old principles of the distinctiveness and vitality of well-known marks taking precedence. The brand with prior use, enforcement and recognition will gain from brand registry on e-commerce platforms, rather than brands with little to no enforcement or use, making legal negotiations and the assertion of rights easier for brands that have taken their rights and enforcement seriously.

Need for enforcement

Millions all over the country now go online to connect with brands. As a result, the need to prevent counterfeits and fakes from reaching consumers has increased considerably, especially when products available online might be harmful to consumers’ health and safety, for example, goods purchased from e-pharmacies.

With restrictions on movement brought on by the pandemic making physical market enforcement (checking warehouses and factories) or enforcement through customs (visiting ports and inspecting goods) impossible, practical issues have arisen when trying to gauge whether imported goods or stored goods are genuine or not.

Unique protection measures by the Indian courts have come in handy to ensure public health and safety by providing immediate relief on matters concerning essentials such as counterfeit masks, imports of oxygen concentrators, etc. Orders to address courts virtually in emergency matters have also assisted in prioritising matters for general public safety over corporate disputes. A great deal of comfort comes to right holders through the courts’ system of expedited trials, where the timeframe for relief is lowered in cases where pre-litigation mediation is encouraged. This reduces time, effort and costs incurred for each such dispute, while finding a quicker solution between parties. Similarly, the courts’ well-defined focus on arbitration as an alternate dispute resolution mechanism also makes virtual relief accessible, as is the need of the hour.

Collaborative efforts

While brand owners are typically responsible for ensuring sourcing, distribution and enforcement of their goods and services, many international brands ceased to have an equitable presence in India as the borders closed. During the pandemic, when certain brands – typically from the medical equipment and services industry – have not been present, the licensees of these brands have taken care of their operations in India.

The licensees are assigned specific rights under a licensing agreement, and special provisions are also made to ensure enforcement in Indian markets in these cases. For example, Gilead has signed voluntary licensing agreements with five generic pharmaceutical companies for expanding the supply of the Remdesivir drug in India and the sub-continent. To enhance global access to life-saving drugs, a right to receive technology transfer of Gilead’s manufacturing process introduces a brand new breed of IP in the Indian market.

While technology transfer is helpful in the current global scenario, medicines and other medical products enter India from international waters through licensees. As such, a mere waiver of IP or patent rights or technology transfer renders the broader process incomplete in the larger scheme of things. Despite having assigned rights to manufacture a drug in the country, there is no way to ensure the constant monitoring of quality standards for such setups. Health and safety requirements for such projects are also very specific, which may need infrastructural and legal changes.

Influx of technology

Technology has played a major role within the legal fraternity throughout the pandemic, with virtual hearings and e-consultations taking over the judicial process. As the IP industry is fairly digitised, this massive influx of technology due to lockdowns worldwide, the digitisation of records, court files, and documents have moved online faster than before.

Undoubtedly, having an already tech-savvy trademark office before the pandemic hit us has been a big relief to the IP fraternity, and a step in the right direction. Disputes surrounding receipt dates have come down substantially with online filing, documentation of trademarks, and the digital examination process, making the entire process clearer and faster in the interim. Obtaining and monitoring IP in India is fairly smooth, with increased transparency and reduced red tape.

Safe harbour

In February 2020, Delhi High Court reaffirmed the judiciary’s position on e-commerce and the safe harbour protection that such online intermediaries are afforded under the law. This decision set aside an earlier judgment where applications were filed by direct selling entities like Amway, Modicare and Oriflame against e-commerce platforms including Amazon, Snapdeal and Flipkart. It was held that direct selling guidelines are not law, but mere guidelines until the new Consumer Protection Act, 2019, is enacted. It was further held that the value-added services provided by the e-commerce websites (such as warehousing, packaging, delivery, etc.) do not dilute the safe-harbour granted to them under section 79 of the IT Act in any way. Such clarifications are vital for litigants, consumers and large e-commerce websites with increased online activities during the current pandemic.

Enforcement in cybersquatting

With the advent of online branding during lockdowns, cybersquatting is another way that a brand may suffer. In June 2020, the Bombay High Court, in Hindustan Unilever v Endurance Domains and Others, shed light on the nature of judicial relief granted in cybersquatting cases in India, also focusing on the registrar’s role in domain name registrations.

While addressing the relief sought against the registrars, the court held that the process of registering a domain name does not involve any manual intervention. As such, a blocking or continued suspension request may not be feasible through registrars. This assists brands in taking enforcement actions further through online routes.

Blocking access. The court noted the importance of “blocking access” as an instruction given by the government to an internet service provider, a relief that proves detrimental for cybersquatters. As such, the court directed the infringing third-party domain names to be suspended by the respective registrars. In doing so, the judgment provides us with a fundamental framework that can be relied on in cybersquatting cases, an increasing menace that right holders struggle with to protect their online presence.

patent Pravin Anand,Managing Partner,Anand and Anand

Anand and Anand
B-41, Nizamuddin East,
New Delhi 110013, India

Contact details:
Tel: +91 120 405 9300
Email: email@anandandanand.com

www.anandandanand.com


Japan

Recently, Japan has been giving stronger protection to its IP rights. The grand panel decisions of the Intellectual Property High Court in 2019 and 2020 have shown its intention to increase damages amounts. The country amended its Trademark Act in 2019 and 2021 to increase damages amounts and expand the scope of infringing acts.

As a result, the risk of Japanese trademark infringement is higher and a careful risk evaluation is recommended when selling products to the country. At the same time, the value of IP rights is also higher and infringement lawsuits are a more attractive option for global companies operating in the country. This article focuses on the recent statute amendments related to trademark infringement risk.

Hirofumi Tada, Attorney at Law, Ohno & Partners
Hirofumi Tada
Attorney at Law
Ohno & Partners in Tokyo
Tel: +81 3 5218 2339 (Japan); +1 510 705 2539 (US)
Email: tadah@oslaw.org

Expansion of infringement

Previously, to “import … goods or package of goods to which a mark is affixed” into Japan constituted trademark infringement only if it was done “as a business”, under articles 2(1)(i), 2(3)(ii), and 25 of the above-mentioned act. To meet the requirement for “as a business” did not need a commercial purpose, but should be conducted repeatedly or continually. For example, if products are repeatedly imported to Japan by a trading company for distribution, the trading company’s importation constitutes an infringement. However, suppose an individual imports goods for the first time for private use, in that case, it does not constitute infringement because it does not meet the “as a business” requirement.

Such importation by individuals has been more common recently, due to the expansion of e-commerce across the border. Also, sometimes it is not so clear if the importation is done “as a business” or not. To cover such cases, the new article 2(7) of the act provides that the “… act of importing includes an act of a person in a foreign country causing another person to bring into Japan from the foreign country”. Under this clause, a foreign entity that sells products to Japan “as a business” can be a trademark infringer, even if the entity itself does not directly import the products into Japan. However, the scope of the requirement “causing another person” is not so clear, so case laws are needed for a more accurate interpretation.

Previously, a foreign entity selling products to Japan via e-commerce platforms did not owe infringement liability, as long as it did not import the products by itself. However, once this amendment takes effect, such a foreign entity runs the risk of being sued before a Japanese court and held liable. In addition, the importation of the products may be injuncted by Japanese customs.

Accordingly, the amendment poses a substantial new risk to a foreign business that sells products to Japan. This is a significant change for some companies doing business across the border. Thus, when a foreign business plans to sell a large number of goods to Japan, even if the Japanese customers are non-business individuals, free-to-operate (FTO) research of a Japanese trademark is highly recommended. As a side note, the amended Japanese Design Patent Act has a similar clause, so FTO research for a design patent is also recommended.

Increase of damages amount

Recently, Japan amended the damages presumption clauses to increase the presumed damages amount. Due to the difficulty of proving the damages amounts of intangible trademark right infringements, the act has three types of damages presumption based on:

(1) trademark owner’s profit;

(2) infringer’s profit; and

(3) a reasonable royalty that gives the trademark owner the option to choose the type of presumption.

Presumption based on trademark owner’s profit. Under article 38(1) of the Trademark Act, the damages amount is presumed to be the trademark owner’s marginal profit per unit multiplied by the number of products assigned by an infringer. For example, suppose the trademark owner’s marginal profit per unit is USD50 and the infringer assigned 10,000 units. In that case, the presumed damages amount is USD500,000 — in an actual case, judges may reduce the amount, considering many factors.

If the trademark owner was unable to sell the assigned quantity entirely or partially, such an amount is deducted. This means that the quantity of products used in the calculation is limited to the trademark owner’s sales, or manufacturing capacity. For example, when the trademark owner’s capacity was limited to 1,000 units, even if the infringer sold 10,000 units, the presumed damages amount under article 38(1) is limited to USD50,000.

Previously, it was not so clear if a trademark owner could seek reasonable royalty for the amount that exceeds its capacity. However, the recent amendment clarifies that the trademark owner can still seek reasonable royalty damages for the amount exceeding its capacity, at least when there is a loss of licence opportunity.For example, the trademark owner can still seek damages that are calculated based on reasonable royalty for 9,000 units besides the profit-based presumption for 1,000 units. Thus, when the reasonable royalty per 1 unit is USD10, the total damages presumption is USD140,000 (USD50 x 1,000) + (USD10 x 9,000).

This results in an increase in the damages amount, and a small business with limited capacity, such as a startup, can seek fair damages. At the same time, this means an increase in trademark infringement risk.

Presumption based on infringer’s profit. Under article 38(2) of the act, the damages amount is presumed to be the infringer’s profit earned by the trademark infringement. For example, if the infringer’s marginal profit per unit is USD40 and the infringer assigned 10,000 units, the presumed damages amount is USD400,000. But when the trademark owner’s capacity is limited to 1,000 units, the damages are limited to USD40,000 (USD40 x 1,000). The recent amendment does not explicitly change article 38(2), but the trademark owner can likely seek reasonable royalty damages for the amount exceeding its capacity, just like article 38(1).

Presumption based on a reasonable royalty. Regarding the presumption based on a reasonable royalty, the recent amendment makes it clear that the court’s determination that the product infringes the trademark can be taken into consideration when calculating the reasonable royalty. This means that the court can decide a royalty fee amount higher than the parties would have agreed before the infringement.

At the time of licence negotiation, it is often uncertain whether the product actually infringes the trademark right or not. The royalty rate would have been higher if it were clear that the product infringed on the trademark right. Thus, the court can consider its determination that the product infringed trademark to increase the damages amount presumed, based on a reasonable royalty. For example, even if the trademark owner and the infringer agreed on a 5% royalty fee, the court can award 9% damages, considering the determining fact that the product infringes the trademark.

This results in an increase in the damages amount. If the reasonable royalty fee is low, it is sometimes economically reasonable for an infringer to violate a trademark right and pay the reasonable royalty, after losing litigation. This amendment makes it clear that the law does prevent such behaviour. At the same time, this means an increase in trademark infringement risk.

Conclusion

Under the recent amendments, the Japanese trademark infringement risk is higher, and careful risk evaluation, such as trademark FTO research, is highly recommended when selling products to Japan.

At the same time, due to the recent pro-IP trend in Japan, the value of Japanese IP including a trademark is higher, and infringement lawsuits in Japan are a more attractive option for global companies.

OHNO & PARTNERS

OHNO & PARTNERS

21/F Marunouchi Kitaguchi Building
1-6-5, Marunouchi
Chiyoda-ku, Tokyo – 100 0005, Japan

Contact details
Tel: +81 3 5218 2331
Email: ohnos@oslaw.org
www.oslaw.org


Philippines

The primary legislation governing trademarks in the Philippines is the Republic Act, also known as the IP Code of the Philippines. The IP Office of the Philippines (IPOPHL), particularly the Bureau of Trademarks (BoT), is the government agency tasked with registering trademarks in the country.

Editha Hechanova id
Editha R Hechanova
President and Managing Partner
Hechanova Group in Makati City
Tel: +63 8812 5545
Email: editharh@hechanova.com.ph

Filing

Before the pandemic, an applicant could file its application for trademark registration with the IPOPHL manually, by post, or online. However, to ensure compliance with health protocols and preventive measures to avoid covid-19 infection, online filing and payment were made mandatory on 1 September 2020, through IPOPHL memorandum circular No. 2020-036.

Only applications involving payments of PHP100,000 (USD2,200) or more per transaction are filed manually. Trademark applications may be filed via the national route (direct filing) or the Madrid system – an international system for facilitating trademark registration in multiple jurisdictions worldwide – by designating the Philippines.

Examination

Inspired by best practices from the European Intellectual Property Office, the IPOPHL has adopted the joint examination track (JET) procedure, where a group of senior examiners will immediately decide on a trademark’s registrability on absolute grounds. If allowed by the JET examiners, the trademark application is published for opposition for 30 days, and if there is no opposition it will be deemed registered on the 31st day.

If the trademark is not allowed, the applicant is notified promptly. The JET procedure does not apply to trademarks being objected to on relative grounds, e.g., where there is the likelihood of confusion with an identical or similar mark, the application undergoes the regular trademark examination. Presently, only visible trademarks are protected under the code, including non-traditional trademarks such as three-dimensional, position, hologram and motion marks.

Noemi P Rivera, Principal and Vice President of Trademarks, Hechanova Group in Makati City
Noemi P Rivera
Principal and Vice President of Trademarks
Hechanova Group in Makati City
Tel: +63-8888-4293
Email: noemi.rivera@hechanova.com.ph

Opposition and cancellation

The bureau of legal affairs within the IPOPHL has original jurisdiction over opposition and cancellation action, a summary proceeding. In deciding the contest between contending trademarks and determining the likelihood of confusion, case law has developed two tests – the dominancy test and the holistic, or totality, test.

The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. Given greater consideration are the aural and visual impressions created by the trademarks in the public mind.

On the other hand, the holistic test entails considering the entirety of the trademarks. The dominancy test is expressly provided for in the code, but case laws also apply the holistic test. Surprisingly, in Kolin Electronics Co v Kolin Philippines International (2021), the Supreme Court en banc made it crystal clear that the holistic test has been abandoned

Prior use

The Philippines follows the first-to-file regime. In many decisions in the past, the prior user in good faith defeated the right of the first filer in good faith, even invalidating a registered trademark. In the landmark decision of Zuneca v Natrapharm, the Supreme Court ruled that trademark ownership is acquired solely by registration, citing section 122 of the code, which provides that “the rights in a mark shall be acquired by registration made validly in accordance with the provisions of this law”.

Some justices dissented, unable to accept that “use” has been abandoned as a mode of acquiring ownership of the trademark, since section 124.2 of the code expressly mandates the registered owner of the trademark to file a declaration of actual use (DAU). Such certificate of registration is prima facie evidence of the
validity of the registration and the registrant’s ownership of the trademark.

Justice Alfredo Benjamin Caguioa, who wrote the majority opinion, said that the DAU did not refer to the mode of acquiring the trademark, but was a requirement to maintain ownership of the mark. He also wrote that the prima facie nature of the certificate of registration does not reflect that prior use is still a recognised mode of acquiring ownership under the code.

Joy Marie Gabor-Tolentino
Assistant Vice President of Trademarks and Junior Partner
Hechanova Group in Makati City
Tel: +63 8812 6561
Email: joymarie.tolentino@hechanova.ph

Rather, it is meant to recognise the instances when the certificate of registration is not reflective of ownership of the holder, such as when:

(1) the first registrant has acquired ownership of the trademark through registration, but subsequently lost the same due to non-use or abandonment;

(2) the registration was done in bad faith;

(3) the trademark itself became generic;

(4) the trademark was registered contrary to the code (e.g., when a generic mark was successfully registered for some reason); or

(5) the registered mark was being used by, or with the permission of, the registrant to misrepresent the source of the goods or services on or in connection with which the mark is used.

The decision further stated that a prior user in good faith could continue using its trademark, but could only transfer or assign the trademark with the business related to it.

Maintaining the trademark registration

The issuance of the certificate of registration for trademarks filed via the national route, or the statement of grant of protection for trademarks filed via the Madrid system, are not the ultimate steps in securing trademark protection.

While the filing of evidence of use is not a prerequisite for the grant of the registration, the same must be submitted with the IPOPHL within specified periods to maintain the active status of a trademark. The common causes of trademark removals from the registry are the non-filing of the DAU, or the failure to comply with the use requirement.

In the case of Birkenstock Orthopaedie GmbH & Co KG v Philippine Shoe Expo Marketing Corp, the Supreme Court held that failure to file the DAU within the requisite period resulted in the automatic cancellation of registration of a trademark. In turn, such failure was tantamount to the abandonment or withdrawal of any right or interest the registrant had over the trademark.

Licensing. One of the easier modes of entering the Philippines market is through licensing. A licence agreement involving trademarks and other IP rights need not be registered, but has to comply with the provisions of the code relating to prohibited clauses and mandatory clauses, being considered a technology transfer arrangement (TTA). Licensors usually have questions on the following clauses:

A non-compete clause. Jurisprudence shows that a non-compete clause may be allowed, provided it does not exceed one year;

Philippine laws shall govern the interpretation of the agreement, and in case of litigation, the venue shall be the proper court in the licensee’s residence; and

The licensor shall bear taxes arising from the licence agreement. There is an exception, such as the value-added tax (VAT) that can be passed on to the licensee, but there is a need to request for said exemption.

Enforcement of trademark rights. Actions such as infringement and/or unfair competition may include administrative, civil or criminal. The IPOPHL has jurisdiction over administrative action, can award damages, and has authority to issue provisional remedies such as preliminary injunctions.

The IPOPHL can issue seizure orders, but not as a separate proceeding or during the pendency of an action. It is the regular courts that can do so in a civil case or a criminal proceeding. Due to the pandemic, some courts have opted to conduct hearings and receive filings online.

The IPOPHL has mandated the online submission of initiatory and all other pleadings for inter partes cases, such as oppositions and cancellations. Failure to do so results in the non-prejudicial dismissal of the actions. Enforcement actions such as raids continue despite the pandemic, with the enforcing agencies and representatives of the trademark owner wearing the necessary masks and face shields, and observing social distancing.

Border Control. A relatively cheaper mode of fighting counterfeits is by preventing their entry into the Philippines market through the Bureau of Customs (BoC), which has the power to seize counterfeit goods. Recordation of the trademark with the BoC is inexpensive and provides a continuing alert to bureau examiners to watch out for fakes. Furthermore, a BoC officer can issue a letter of authority to inspect and seize the suspected imported goods for which the proper taxes and duties may not have been paid, and usually, these are counterfeits. Despite the pandemic, the bureau continues to provide this service.

HECHANOVA GROUP

HECHANOVA GROUP
(Hechanova & Co Hechanova Bugay Vilchez & Andaya-Racadio)

GF, Salustiana D. Ty Tower,Paseo de Roxas Ave.

Makati City — 1229, Philippines

Contact details

Tel: +632 8893 4878

Email: mail@hechanova.com.ph

www.hechanova.com.ph


Taiwan

Trademark protection is obtained through registration, and Taiwan follows the first-to-file system. The following types of marks are registrable: Trademarks (for both goods and services); collective marks; certification marks; and collective trademarks (for both goods and services).

All distinctive signs are registrable as a trademark. In addition, the Examination Guidelines on Non-traditional Trademarks, published by the Taiwan Intellectual Property Office (TIPO), states that smells, patterns and positions are also registrable as a trademark, and tactile and gustatory signs are only registrable as a trademark exceptionally.

intellectual property
Tsai Lu-Fa
Partner
Deep & Far in Taipei
Tel: +886 2 2585 6688 (ext. 8187)
Email: lawtsai@deepnfar.com.tw

Registration proceedings

Applications are filed at the TIPO, and multiple-class applications are possible. Foreign applicants without domicile or business offices in Taiwan are required to apply through a local agent. However, a legalised and/or notarised power of attorney is not required, and foreign applicants do not need a domestic company or domicile registration.

The application process includes a formal examination, examination of absolute grounds (e.g. distinctiveness) and examination of relative grounds (e.g. likelihood of confusion). Signs without innate distinctiveness can be registered if distinctiveness has been acquired through use.

Opposition against trademark. The opposition period is three months from the publication date of the trademark registration.

Duration. Trademark registration is valid for 10 years from the publication date of the registration, and renewable for another 10 years.

Grace period. A trademark may be renewed within six months preceding the expiry date. The grace period for trademark renewal is six months from the expiry date of the registration. After the expiry of the grace period, the trademark registration will automatically lapse.

A lapsed mark cannot be restored. However, if the owner failed to comply with the grace period for renewal due to an act of God, or any cause not attributable to the owner, he/she may apply for restoration within 30 days from the day following the date on which the cause vanishes. However, no application for restoration may be made beyond one year after the failure to comply with the grace period for renewal.

A lapsed trademark may be re-registered in the name of a third party at any time, if the renewal application is not filed within the grace period.

Use requirements

If a trademark has not been used for three years from the publication date of the registration, or has not been used later for a continuous period of three years without a justifiable cause, the TIPO may ex officio, or at the request of a third party, cancel the trademark registration.

The party alleging non-use of a trademark needs to provide prima facie evidence on petitioning for the cancellation of the trademark registration, while the trademark owner bears the burden of proving trademark use after the cancellation proceeding is initiated. In addition, the party alleging non-use of a trademark is not required to prove a legitimate interest for the cancellation of the trademark.

Use is only required to be done in Taiwan. Trademark use as referred to in the Trademark Act means the use of a trademark for marketing purposes in any of the following situations to enable the relevant consumers to recognise it as a source-identifier:

  • Applying for a trademark on goods or the packaging of goods;
  • Possessing, displaying, selling, exporting or importing the above-mentioned goods;
  • Applying for a trademark on articles relating to services provided; and
  • Applying for a trademark on commercial documents or advertisements relating to goods or services.
  • Use of a mark on digital video or audio, electronic media, the internet or other media also constitutes use of the trademark. Use must not necessarily have been continuous. Sporadic, intermittent or one-off use will suffice. To use a similar or related trademark will not necessarily suffice.
  • Use of a mark in a form different from the form in which it is registered constitutes use of the trademark only if merely minor changes have been made, and the changes do not alter the distinctive parts of the trademark.
  • Use of the mark in a different form does not constitute use in the event that:
  • A coloured trademark is changed to black and white;
  • The colours of a coloured trademark are changed; and
  • Only a part of a trademark has been used.

Licence agreement

In Taiwan, a licence agreement may be concluded in writing or orally. It is permitted to license an unregistered trademark. A registered trademark may be licensed for all or part of the designated goods or services. A licence may be exclusive or non-exclusive.

If a registered trademark is assigned after the licence has been entered in the register, the assignee is still bound by the licence agreement. The sale of a registered trademark does not automatically terminate the licence if the licence of the registered trademark is entered in the register. The Trademark Act provides for the following:

  • If a trademark is assigned subsequent to the recordal of a trademark licence, the assignee shall be bound by the licence agreement;
  • An exclusive licensee has the right to exclude the trademark owner and any third party from the use of the licensed trademark;
  • An exclusive licensee has the right to sublicense the trademark; and
  • A trademark owner may abandon his/her rights. However, if a licence or a pledge has been entered in the register, the trademark owner shall obtain the consent of the licensee or the pledgee.

There are provisions in the Trademark Act for the recordal of a trademark licence, which is voluntary, but becomes effective against third parties only after it is recorded at the TIPO. The recordal must be applied for before the expiration of the trademark registration. The licence period may exceed the registration period.

In this case, if the trademark registration is renewed within the renewal deadline, the licence does not need to be recorded again, and if the trademark registration is not renewed within the renewal deadline, the licence recordal will lapse with the lapse of the registration. However, the licence agreement for the unregistered trademark will still be effective between the licensor and the licensee.

There are no statutory provisions prescribing the form and/or content of a licence agreement. A request to record a trademark licence in the register shall be made by the trademark owner or the licensee by filing a written request specifying the following:

  • The name, address of domicile or business establishment, nationality or locality of the trademark owner and the licensee and, if any, the name of the representative;
  • If any, the name and address of the domicile or business establishment
    of the agent;
  • The registration number of the trademark;
  • Whether the licence is exclusive or non-exclusive;
  • The date when the licence took effect and, if any, will be terminated;
  • Where the licence is for part of the designated goods or services, the list of such goods or services and the classes; and
  • Where the licence is for a particular locality, and the name of that locality.

The licence agreement determines when the licence becomes effective. The licence becomes enforceable against third parties on the date when the licence recordal is published in the official gazette. An unrecorded licence is not required to be published.

There is an evidentiary presumption that the trademark use of a recorded licensee is a legal use. A non-exclusive licensee may not join the trademark owner’s infringement proceedings unless the trademark owner petitions the court for third-party participation.

The Trademark Act provides that an exclusive licensee has the right to initiate infringement proceedings in its own name unless the licence agreement provides otherwise. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings.

Deep & Far

Deep & Far Attorneys-at-Law’

13/F, 27 Sec. 3, Chung San N Rd,

Taipei 104, Taiwan, ROC

Contact details

Tel: +886 2 2585 6688

Email: email@deepnfar.com.tw

www.deepnfar.com.tw

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