Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The laws that govern registration of trademarks include the Trademark Act and its subsidiary legislation (eg, the Enforcement Rules and Standards of Trademark Fees). There are also administrative rules formulated by the Taiwan Intellectual Property Office (TIPO) such as examination guidelines and operational points.

International law

Which international trademark agreements has your jurisdiction signed?

Taiwan became a member of the World Trade Organization in 2002; the country complies with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) for trademark protection.

Regulators

Which government bodies regulate trademark law?

The Competent Authority of the Trademark Act is the Ministry of Economic Affairs (MOEA), and the trademark affairs are administered by the MOEA's IP office.

Registration and use

Ownership of marks

Who may apply for registration?

Any domestic or foreign natural person, juristic person or business entity (business establishment or firm) that use trademarks to identify the goods or services they offer in trade may file a trademark application in the name of an individual, juristic person or business entity, except for collective trademarks, collective membership marks and certification marks, which are subject to the following rules:

  • applicants for a collective trademark or collective membership mark are restricted to business associations, social organisations or groups that exist as a juristic person; and
  • applicants for a certification mark are restricted to juristic persons, groups or government agencies that are capable of certifying another party’s goods or services.

Foreigners from countries that provide reciprocal protection of trademarks or accede to an international treaty to which Taiwan accedes may be granted trademark registration.

Scope of trademark

What may and may not be protected and registered as a trademark?

Under the Trademark Act, all forms of sensory signs that are distinctive enough to identify goods (trademarks) or services (service marks) from others can be registered as a trademark.

A trademark shall refer to any sign with distinctiveness, which may consist of words, designs, symbols, colours, three-dimensional shapes, motions, holograms, sounds, scents etc, or any combination thereof.

In addition to the 'non-traditional' marks, certification marks, collective membership mark and collective trademarks may also be registered.

Unregistered trademarks

Can trademark rights be established without registration?

The Trademark Act in Taiwan provides for trademark rights upon registration. Unregistered trademarks must be well known in order to be eligible for protection provided under the Fair Trade Act. Article 22 of the Fair Trade Act provides that no enterprise shall use a well-known trademark in the same or similar manner on the same or related goods or services that causes confusion. This provision does not apply to registered trademarks.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous foreign trademarks can be protected only if they are famous in Taiwan. To prove its fame, relevant evidence of domestic use of the trademark should, in principle, be submitted. However, even if a trademark has never been used domestically or its actual domestic use is not extensive, it can still be deemed famous if the objective evidence shows that the fame of the trademark established through extensive use in other countries has reached Taiwan. Therefore, whether the geographical scope of the use of the trademark is closely connected with Taiwan should be considered, including factors such as whether there are frequent economic, trade and travel activities or similar culture and language between that geographical scope and Taiwan. In addition, the fact that the goods of the trademark are extensively covered by newspapers and magazines sold in Taiwan or that the trademark has been widely and frequently discussed online in Chinese can also be used as a factor in considering the fame of the trademark.

Supporting evidence of use of a famous trademark must include a representation of the trademark and a date, or be supplemented by any materials that may be used to identify the trademark as used and the date of use. Such evidence of use is not limited to domestic materials. However, in the case of foreign materials, whether they can serve as evidence that the trademark is well known still depends on whether the domestically relevant enterprises or consumers may have come to know the trademark from those materials. The following material may serve as supporting evidence:

  • invoices (at least 10 records per year), brochures, company profile, marketing documents, import and export documents and detailed statistical data of sales for the goods or services;
  • advertisements in domestic or foreign mass media, such as newspapers, magazines or television, including advertising expenditure;
  • documents relating to the sales outlets and channels of trade or types of distribution, including amount of annual sales;
  • appraisal of the mark in markets by traders, ranking in sales amounts, ranking in advertising expenditure or the business status relating to the mark;
  • proof of the year when the mark was adopted or created (eg, date of first use) and proof of continual use of the mark;
  • domestic and or foreign registration information of the trademark;
  • market survey reports issued by credible organisations;
  • documents showing the recognition made by the administrative or judicial authorities (eg, court decision recognising the fame of the mark); or
  • other evidence proving the fame of the mark.

The protection provided for a famous mark under the Trademark Act and the Fair Trade Act includes:

  • the right to prevent another from registering or using a similar mark that constitutes a likelihood of confusion or likelihood of dilution of the distinctiveness or reputation of the said famous mark; and
  • the right to prevent another from using names or words contained in a famous mark as one’s company name, business group, association or domain or any other name identifying a business entity that constitutes a likelihood of confusion with the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said famous mark.
The benefits of registration

What are the benefits of registration?

A registered trademark entitles its proprietor to statutory exclusivity and remains valid within a given term throughout the entire territory of Taiwan. The proprietor of a registered trademark will:

  • have the exclusive right to use the registered trademark for the goods or services specified in the registration;
  • have the right to authorise use by other people of the registered trademark for the goods or services specified in the registration;
  • have the right to sell the registered trademark or use it as a property to establish a pledge;
  • be able to stop people from using the trademark for the goods or services that might be covered by the trademark registration and thereby cause confusion;
  • be able to request the customs authority to prevent the import or export of goods that infringe the registered trademark; and
  • be able to take a legal action against infringers that use the registered trademark as their own on identical or similar goods or services without the proprietor’s consent.

In other words, a registered trademark enables the proprietor to better protect market share or profits by preventing people from counterfeiting it.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A scanned copy of a power of attorney simply signed by the applicant is needed for filing a trademark application.

A reproduction of the trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible.

Electronic filing is available.

Trademark searches are not required before filing, but it is recommended to conduct the searches before filing or using a proposed mark.

Taiwan adopts the International Classification of goods and services, and each class is divided into several subclasses by the nature of goods. When examining similar goods or services, cross-reference to other relevant classes will be taken into consideration. Therefore, the searches will be conducted for the subclasses of the applicant’s interested goods, as well as their relevant goods in other subclasses.

The costs for conducting trademark searches are as follows:

  • a word-mark search in one class: US$285. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.
  • a logo mark search in one subclass: US$285, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.
  • a combined word and logo mark in one class: US$435, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.
Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It usually takes eight to nine months to get the trademark application approved and registered, if it goes smoothly. The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of 10 years from the date of registration publication. It generally costs less than US$1,500, including official fees and attorney fees, to file one trademark in one class up to registration, provided the number of designated goods or services for each class is under 20 items.

Filing an application in more classes or receiving the office action from the examiner regarding the acceptability of the specification of goods or services or the application as a whole would increase the estimated time and cost of prosecuting a trademark application.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

From January 2017, TIPO has followed the eleventh edition of the International Classification of Goods and Services (the Nice Classification). Most goods or services listed in the Nice Classification may be claimed, as long as the goods or services are specifically designated.

Multi-class applications are available. Filing such an application will be more cost-effective than filing an application for one single class. Although the official fees for filing and registration are calculated by the number of classes rather than per application, the attorney fee for filing a multi-class application will be reduced for each additional class and the attorney fee for obtaining the trademark registration will only be charged per application. Moreover, costs are also reduced after the multi-class application is approved for registration, since official fees and attorney fees related to the recordation of change, assignment, licence or pledge will be calculated per trademark registration.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

An application for registration of a trademark must be filed with TIPO, where the examiner will begin a formal examination followed by the substantive examination. The examiner may issue an approval of registration, a request for amendment to the application or a preliminary notice of refusal on absolute and relative grounds, including potential conflicts with prior filed applications or prior registered marks before the official refusal of the application. Letters of consent that are not obviously improper are acceptable to overcome the cited hindrance. Under the Trademark Law, similar trademarks can coexist under identical or similar goods or services if consent is obtained from the prior registered mark owners. Identical trademarks can also coexist based on letters of consent, provided the goods or services are not identical.

Upon receiving a preliminary notice of refusal, the applicant may submit a response within one month (for domestic applicants) or two months (for foreign applicants), which the examiner will take into account before refusing or approving the application. The applicant may request an extension of time in which to respond, but no further extensions will be granted unless justifiable reasons are provided.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark need not be claimed before registration is granted. Accordingly, it is not necessary to submit proof of use to obtain the trademark registration. After the trademark is registered, the proprietor should properly and continuously use the registered mark. Although there is no obligation for the registrant to submit proof of use to TIPO to maintain the registration, the registered mark will become vulnerable to non-use cancellation if the trademark has not been used for more than three consecutive years after registration. Any party suspecting non-use may file a petition of cancellation against the inactive registered mark, and the trademark will be cancelled unless the trademark owner shows proof of use of its trademark.

A trademark application that has been filed in a country mutually recognising priority with Taiwan may claim priority within six months following the filing date of which the trademark application was first filed in the given country.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

® and ™ are common symbols associated with trademarks but such marking is not mandatory. The ™ designation may be used on the mark to alert the public to claim of use of the trademark regardless of whether a registration application has been filed with TIPO. The ® can be used only after a registration application is approved by TIPO. For foreign registered trademarks, ® can be used to indicate its registration even it is not registered in Taiwan. However, it violates article 21-1 of the Fair Trade Act to put ® on products or packaging of an unregistered mark, and would be asked to take necessary corrective action within the time prescribed in the order and it may be put an administrative penalty of not less than US$1,700 and no more than US$85,000.

Appealing a denied application

Is there an appeal process if the application is denied?

A final refusal of the application issued by TIPO may be appealed to MOEA's Petitions and Appeals Committee within 30 days after receiving the official decision of refusal. The applicant may further file administrative litigation with the IP court if the appeal decision is unsatisfactory, and finally appeal to the Supreme Administrative Court as a last resort.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Taiwan adopts a post-registration opposition procedure. Once the trademark is approved to be registered and published in the Trademark Gazette, any party may file for opposition against the registration with TIPO within three months of the publication of registration.

The opposition procedure involves the opposing party filing a notice of opposition with TIPO identifying the basis for the opposition, and subsequently submitting a detailed rationale with evidence to support the opposition. The registrant will have the opportunity to file a counter-statement arguing why the registration should be maintained. The two parties can continue filing arguments and observations back and forth until both are content, and TIPO will issue a decision with grounds based on all the arguments and evidence presented by both parties.

In addition, a registered mark that is no longer in the three-month opposition period may be invalidated upon application by an interested party within five years of the date of registration. The grounds for opposition and invalidation are similar to those of registration refusal, among which prior trademark rights, well-known marks and bad-faith filing are the primary bases. Thus, if a brand owner has previously used its trademark on the same or related goods or services anywhere without obtaining registration or establishing reputation in Taiwan, it is still possible to file an opposition or initiate an invalidation action based on the bad faith of the applicant. Invalidation procedures are similar to those for opposition, but the petitioner who files an invalidation against a trademark registration based on the petitioner’s prior trademark rights shall furnish proof that, during the period of three years preceding the date of request for invalidation, the earlier trademark has been used in connection with the goods or services in respect of which it is registered and which he or she cites as justification for their request, or that there are proper reasons for non-use, provided the earlier trademark has at that date been registered for more than three years.

Once the opposed trademark’s registration is contested and confirmed by a disposition of the opposition, no invalidation can be filed against such opposed trademark based on the same facts, evidence and grounds as those in the opposition.

The official fees for filing the opposition or invalidation against one trademark in one class are US$140 and US$245, respectively. The attorney fee will be charged hourly for reviewing and organising the evidence, drafting and filing the opposition or invalidation brief and the subsequent procedures for reporting the adversary’s responses and filing supplemental briefs and reports, depending on the actual time consumed. Since the two parties can file arguments and observations back and forth in opposition or invalidation proceedings, the relevant costs for completing the proceedings are difficult to estimate, and would be around US$2,200 to US$4,800 (including the official fee) if there are no more than two rounds of arguments between the two parties.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term of protection for a trademark is 10 years from the date of its registration, and the rights of a registered mark can last indefinitely if the renewal fees are paid timely. A renewal request must be made within six months prior to expiry of the 10-year term or within six months (grace period) following the expiry date. Proof of use is not required when filing to renew a registered mark.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of a registration may voluntarily surrender his or her registration by filing a request of withdrawal with TIPO. A scanned copy of power of attorney and the Request of Withdrawal Application are required documents.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, as long as they fulfil the requirements of other IP rights. For example, the creativity and originality requirements under the copyright, or the creativity and novelty requirements for a design patent.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Domain Name Dispute Resolution Policy may be applied for resolving the domain name dispute arising out of the trademark.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Yes. A trademark may be licensed to multiple licensees. The licence can be recorded through filing a registration application with TIPO.

The essence of recordation of a trademark licence is to protect a third party from being damaged by the de facto licensing. A licensee might be damaged if the trademark owner assigns the trademark right to the third party (eg, if the licence is not recorded, the third party will not be bound by the previous licensing relationship). The licensee will have to claim its right from the original trademark owner rather than the third party.

Generally, a licensing agreement will include the following provisions: scope, territory and limitation of licence, term and termination, royalty and audit, quality control, warranty and indemnification.

Assignment

What can be assigned?

A trademark can be assigned with or without goodwill, and a partial assignment is possible for certain goods or services. A mark need not be assigned in connection with other business assets to be effective. An application for division of a trademark must be filed before the partial assignment can be recorded.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The required documents for recording the assignment are the power of attorney executed by the assignee and the deed of assignment signed by both parties. Simply signed and scanned copies are sufficient. Either party may apply for the recordation of the assignment with TIPO.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

The recordation of assignment with TIPO is not mandatory, but recommended. The assignment becomes effective upon the commencement of a contractual relationship between both parties.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A trademark rights holder may create pledges on the trademark rights in order to secure the rights of its creditors. Any creation, change or extinguishment of a pledge becomes effective upon the commencement of a contractual relationship between both parties, but an unrecorded entry shall have no locus standi against any third party. Multiple pledges on trademark rights may be created based on the value of the property concerned in order to secure the rights of creditors, provided that the sequence of pledge shall be determined by the precedence thereof. Without the licence of the trademark rights holder, a pledgee may not use that trademark.

To proceed with the recordation of pledge, the following information and documents are required:

  • the period of pledge creation;
  • pledge agreement and other documents proving the creation of a pledge (in the case of foreign companies, with a Chinese translation, the pledge documents need not be notarised or legalised); and
  • executed power of attorney - simply signed and scanned copies are sufficient.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A trademark owner may use border enforcement mechanisms and file civil or criminal action against an alleged infringer. The Taiwan Intellectual Property Court (IP Court) has subject matter jurisdiction over civil and criminal trademark infringement cases. However, a trademark owner may also file the civil or criminal action in a district court. There is criminal liability for a trademark infringer knowingly using an identical or similar trademark for marketing purposes without the consent of the rights holder under the Trademark Act. Therefore, trademark infringement is an offence that is criminally prosecuted.

Procedural format and timing

What is the format of the infringement proceeding?

There is no discovery in any trial, so the plaintiff or prosecutor must collect sufficient evidence before filing the litigation. Live testimony is allowed in certain circumstances and expert witnesses are allowed in most situations. Generally, there will be three judges in an infringement proceeding. It takes about 200 days for a civil case and 100 days for a criminal case in the IP Court.

Generally, the criminal procedure starts from the plaintiff’s filing a complaint with the police or the court or the police’s or prosecutor’s discovery of trademark infringement. After that, the police will investigate evidence, take the suspect’s statements and transfer the case to the prosecutor. Then the prosecutor will determine whether to prosecute the suspect. If so, the case will go into a normal criminal proceeding.

Burden of proof

What is the burden of proof to establish infringement or dilution?

In a civil action, the plaintiff has to prove that it is more likely than not that the defendant wilfully or negligently infringed the trademark.

In a criminal action, the prosecutor has to prove that it is beyond reasonable doubt that the defendant wilfully infringed the trademark.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner may seek any remedy and bring a criminal complaint pursuant to the law. An exclusive licensee may seek the remedies and bring a criminal complaint within the scope of the licence.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Regarding the imported infringing goods, the customs authority will actively monitor the imported goods and will inform the trademark owner if they find any suspicious goods. Meanwhile, a trademark owner may apply for monitoring imported goods with the customs authority and submit relevant documents (eg, comparison charts between the genuine goods and counterfeit goods). After the application is granted by the customs authority, the customs authority will pay more attention to the imported goods bearing with the trademark. After receiving the notice from the customs authority regarding the suspicious imported goods, the trademark owner must go to the customs authority to take photos of the suspicious goods and provide an identification report within 24 hours after receiving the goods if said goods are counterfeit. After receiving the identification report, the customs authority will transfer the case to the court and the court will determine whether the imported goods are infringing goods or not.

Regarding the exported goods, the trademark owner may apply for attachment of the exported goods after explaining the infringement and providing a bond to the customs authority. However, the exporter may provide twice the bond to release the attachment. After the customs authority attaches the exported goods, the trademark owner must file a lawsuit within 12 days after the attachment (the deadline can be extended to additional 12 days by filing an application with the customs authority).

There is criminal and civil liability for an infringer who imports goods infringing the domestic trademark, regardless of whether the imported infringing goods were made or sold in foreign countries.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

There are no discovery proceedings in Taiwan. Therefore, generally a trademark owner will file a criminal complaint with the police because it is much easier for the police to collect evidence. The trademark owner may also save litigation costs, since the plaintiff in a criminal proceeding is the prosecutor and not the trademark owner.

If a trademark owner chooses to file a civil action for some reason, such as that it is difficult to prove the infringer’s wilfulness or the trademark owner aims to acquire damages, it must collect evidence by itself. Effective methods for collecting evidence include hiring a private investigator, conducting due diligence, notarisation of evidence and sample purchase.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

It takes about six months for the first instance of the IP Court to make a decision on whether to grant a preliminary injunction order (the average grant rate between 2014 and 2016 was about 50 per cent). The appeal with the second instance court takes about another six months.

Limitation period

What is the limitation period for filing an infringement action?

For the damages claims, the statute of limitation will apply in either of the following circumstance:

  • within two years after the trademark owner learns about the infringement and the infringer; or
  • within 10 years after the infringement.

For the permanent injunction claim, the statute of limitation is within 15 years after the infringement.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

For a civil action, it may cost:

  • US$5,000 to US$7,000 for trial preparation;
  • US$25,000 to US$35,000 for the first-instance trial; and
  • US$20,000 to US$30,000 for the second-instance trial.

Under current case law, the losing party bears the court fees, but does not bear the winning party’s attorney fees.

Appeals

What avenues of appeal are available?

There are three trial instances: first instance, second instance and the Supreme Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The following defences are available to a charge of infringement or dilution.

Bona fide prior use defence

This is available if the infringer uses the trademark in good faith prior to the application date of the registered trademark.

Fair use defence

This is available if the asserted infringer’s use of the trademark is a descriptive use: for example, indicating the quality and nature of the goods, is in good faith or such use is necessary for the goods or service to be functional.

International trademark exhaustion defence

If the goods have been put on the domestic or foreign market under a registered trademark by the trademark owner or its licensee, the trademark owner is not entitled to claim trademark infringement against such goods, unless such claim is to prevent the condition of the goods been changed or impaired after they have been put on the market or there exist other legitimate reasons.

However, if the domestic trademark owner is different from the foreign trademark owner, the aforementioned trademark exhaustion defence cannot be sustained, according to current case law.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies for a trademark owner in a civil action are as follows.

Monetary damages

The trademark owner may choose to calculate the damages based on one of the following methods:

  • damage incurred and lost profit;
  • profits earned by the infringer; if the infringer cannot prove the cost or necessary expense, the sales amount would be deemed as the infringer’s profits;
  • up to 1,500 times the retail price of the infringing goods; if over 1,500 items of infringing goods were found, the amount of damages shall be a lump sum of the market value of the infringing goods; and
  • the equivalent amount of royalty that may be collected from using the trademark under licensing.

A trademark owner may file a criminal complaint with the judicial authority. However, the trademark owner cannot claim damages unless it files an incidental civil action during criminal proceedings.

Injunctive relief

Injunctive relief, including a permanent injunction, will be granted to the successful trademark owner by the court in the judgment. A permanent injunction order can include a request to destroy infringing goods.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Arbitration

Arbitration is available and enforceable, but not commonly used for trademark matters for the following reasons:

  • it is difficult for the trademark owner to acquire evidence proving the infringement and damages without the assistance of judicial power; and
  • the cost of arbitration is higher than the cost of a criminal action.
Mediation

If both parties agree, the court may arrange a mediation proceeding, in which both parties may negotiate the terms and conditions of settlement. Mediation is occasionally used by the court but is not effective since it is difficult to expect the trademark owner and infringer to have consensus on ceasing trademark use and damages.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Regarding the trademark exhaustion defences, recently, more IP Court judgments hold that trademark exhaustion defence cannot be established when the foreign trademark owner is different from the domestic trademark owner because the domestic trademark owner does not acquire any interest from the 'first sale' made by the foreign trademark owner.