Famous trademarks, no matter registered in Taiwan, could be protected under the Fair Trade Act. The revisions to the Fair Trade Act effective as 6 February 2015 no longer protect the trademarks, which are duly registered in Taiwan under the Trademark Act. The Fair Trade Act will just grant protections for the famous trademarks or any other famous trade dress, which are not registered in Taiwan.
The key revisions to the Fair Trade Act include the following points:
- Any famous personal name, business or corporate name, trademark, container, packaging, or appearance of goods, or any other symbol that represents the suppliers of the goods or services could be protected under the Fair Trade Act. Nonetheless, the revisions to the Fair Trade Act explicitly exclude protections for the trademarks, which have been registered under the Trademark Act. The Fair Trade Act will just protect the unregistered trademarks or any other trade dress. The registered trademarks may merely be protected in accordance of the Trademark Act.
- Unlike the previous provisions that also prohibits any unauthorized use on the goods or services, which are not the same or similar but will cause any likelihood of confusion, the revisions to the Fair Trade Act only prohibit unauthorized use of the famous trademarks or any other trade dress on the same or similar goods or services.
- Under the Trademark Act, the infringement upon the registered trademarks will be subject to civil and/or criminal liabilities. The previous Fair Trade Act imposes civil liabilities and criminal and administrative punishments against infringement upon the famous trademark or other trade dress. Nonetheless, the revisions to the Fair Trade Act stipulates that infringement upon the famous trademarks or any other trade dress in violation of the Fair Trade Act will be merely subject to civil liabilities for damage claims or injunctions. The criminal and administrative punishments will no longer available. The Fair Trade Commission, the authority in charge of the Fair Trade Act for unfair competition, will no longer accept or handle any complaints on infringement upon famous trademarks or any other trade dress.
Due to the change of the protection scope of the Fair Trade Act for the famous trademarks or other trade dress, it will be crucial to arrange protection for the trademarks or other trade dress before launching into the markets.