Newsletter
BOGUS USE OF TRADEMARK SYMBOLS BREACHES FAIR TRADE ACT
On goods and in advertisements on the Taiwan-ese market, one can often see how manufacturers place various symbols at the upper right-hand corner of a trademark, in a way based on the relevant US legislation: "®" to indicate that the mark is a registered trademark, or "TM" (trade-mark) or "SM" (service mark) to indicate that it is used as a trademark. In the area of copyright, works are marked with the copyright symbols "©" or "è" (phonogram), or the wording "Copyright" or " Copr.", along with the year of first publication and the name of the owner of copyright. With regard to patent rights, patented products or their packaging are marked with a patent number, or the word "Patent" followed by the number.
Article 82 of the Patent Act provides that a pat-ented item or its packaging must be marked with the relevant patent number, otherwise the pat-entee may not claim damages for infringement unless he can prove that the infringer was aware that the product was patented. Article 83 of the old Patent Act prohibited the use of wording or markings suggesting that a patent had been granted for a non-patented item. However, this provision was repealed with effect from 31 March 2003, as part of the complete decrimi-nalization of the patent system, the reason being that misleading patent-related markings could be adequately dealt with under the Merchandise Labeling Act, the Penal Code, the Fair Trade Act, and the Civil Code.
With regard to trademarks and copyright, neither the Trademark Act nor the Copyright Act con-tains any explicit provisions to define trademark or copyright symbols or markings, to regulate how they should be used, or to define the legal status of false markings.
In a meeting held on 11 December 2003, the Fair Trade Commission determined in a case that a business's use of the symbol "®" at the lower right-hand corner of a trademark, during the pe-riod when an application for registration of the trademark was pending, or when application for registration had been approved but the registra-tion had not yet been irrevocably acquired, was a false and misleading representation concerning the trademark, and thus violated Article 21 Paragraph 1 of the Fair Trade Act.
A rather controversial issue in current practice is that whether consumers in Taiwan are likely to be misled into believing that a trademark regis-tered in another territory is also registered in Taiwan, if the symbol "®" is used on foreign goods bearing the trademark when these are sold in Taiwan as well as in the territory where the trademark is registered; and whether the FTC or the courts will therefore hold such use of the symbol to be misrepresentation. This remains to be clarified in future cases.