An act of infringement: The use of other's registered trademark as a company name
2008/06/18 TaiwanIntel Corporation (U.S.A.) has emerged victorious in their trademark lawsuit against infringer of their well-known trademark “INTEL” in Taiwan as the High Court judged that the use of the Chinese characters of the mark “INTEL” as a company name by defendant is indeed an infringing behavior afflicted upon a well-known trademark.
Court Verdict:
1.In respect to the Chinese characters of the mark “INTEL”, the referred Chinese characters do not carry any meanings. However, with regard to the use of the said Chinese mark as a company name by the defendant, the plaintiff on the other hand, owns a total of 76 trademark registrations of the mark “INTEL” under classes 9,14,16,18, 21, 25, 28, 35, 36, 37, 38, 40, 41, and 42. The evidence demonstrating the fact that the plaintiff is engaged in an extensive business operation and the said mark is an important symbol and asset to the plaintiff. Large capital has also been invested in managing, developing, and marketing the Chinese characters of the mark “INTEL”; consequently, the said mark is deemed well-known to the consumers due to the extensive public exposure over the years.
2.The defendant claims that the plaintiff has made public announcement indicating that the Chinese characters of the mark “INTEL” will no longer be used as a trademark. They have not infringed the plaintiff’s trademark rights by registering the said Chinese characters as their company name; moreover, they have not used the said mark as a trademark on their products.
3.The defendant further alleges that their business operation lies mainly on exports, which differs from plaintiff’s field of business. Nonetheless, the defendant’s business scope use to include the description “wired/wireless communications equipment and apparatus manufacturing” which is relevant to the goods registered under the plaintiff’s famous trademark, “INTEL” under class 9. It is apparent that the defendant is taking advantage of the reputation of the plaintiff’s well-known trademark by registering the said mark as its company name.
4.In accordance to the Taiwan Trademark Law Article 61(1), a trademark right holder may claim for damages from a person infringing one’s trademark rights, and may request for excluding infringement thereto; in case of likelihood of infringement, the said right holder may also request for the prevention thereof. Doctrine of retroactivity applies.
Taiwan Civil Code Article 184 (1) and Corporate Law Article 23 (2) also state that if a person intentionally or negligently infringe upon the rights of others, he shall be charged with their employer with joint responsibility for the compensation for the damage. In reference to the Decision issued by the High Court case no.: 148 in the year 2005, the court ruled in favor of the Plaintiff. As the defendant still engages in infringing the said mark, the plaintiff may claim damage counting back from the date when the said activity ceases.
Source from Judicial Yuan
Translated by Jenny Yu
International Affairs
