Whether using in China a trademark, which is registered in Taiwan, without the consent of the trademark registrant of Taiwan violates the Trademark Act of Taiwan is a very controversial issue in practice. The Intellectual Property and Commercial Court targeted a specific case of selling trademarked goods on online platforms such as Alibaba and Taobao in China and ruled in 2023 that such an act did not violate the Trademark Act of Taiwan.  The key issue of the case is whether the Trademark Act of Taiwan is applicable to trademark infringement, which is purely conducted in China.

 

The Court explained that the use of trademarks for goods or services based on the purpose of commending goods or services is the so-called use of trademarks as stipulated in the Trademark Act of Taiwan. Trademark registrations are protected based on the principle of territorialism and are deeply regional. Trademarks registered in a specific country or area, except for famous trademarks or logos, in principle only enjoy exclusive rights within the territory of that country or area and do not extend beyond the territory. The trademark trial under the Trademark Act adopts territorialism, which means that the Trademark Act of Taiwan basically should be applicable only within the regions of Taiwan, Penghu, Kinmen, and Matsu that are currently governed by the Republic of China. According to Article 2 of the Trademark Act of Taiwan, a trademark to be protected in Taiwan should be registered with the trademark authority in accordance with the Trademark Act. The trademark right is based on the principle of territoriality, and then the trademark right obtained in Taiwan may be protected only within Taiwan.

 

The Court further expounded that judging from the current political, economic and trade status quo, the Taiwan area and the China area have been individual political, economic and trade areas. Therefore, the products sold in China should not be considered to be sold in Taiwan. Once it is believed that the Trademark Act of Taiwan is sufficient to regulate the marketing behavior in China, and the trademark law of China is also sufficient to regulate the marketing behavior in Taiwan, the legal order governing trademark issues will be disordered and the people on both sides of the strait will be at a loss as to what to do.