2022/06/16 copyright©️ GOLD KEEN INTELLECTUAL PROPERTY OFFICE
Determination of trademark infringement
Trademark infringement is divided into two types according to the way of use, respectively based on Article 68 and Article 70 of the Trademark Law.
※Articles 68, 70, 95-97 of the new Trademark Law amended and promulgated on May 4, 2011, the effective date is yet to be determined. The laws and regulations listed below in this article are all newly revised contents.
1. General trademark infringement (Article 68 of the Trademark Law):
"Using a trademark that is identical or similar to a registered trademark for marketing purposes without the consent of the trademark owner for the same product or service."
For example:
- The registered trademark of the restaurant is "NNB", and other restaurants also use the trademark of "NNB">>>Infringement of the same name
- The registered trademark is "NNB", and other restaurants use "VNB". The font and design are very similar to "NNB" restaurants, which may confuse consumers.
Whether the trademark is confusing or misidentifying, in practice, it is currently referring to the review criteria of the Intellectual Property Office for confusion and misidentification. Comprehensive judgment of goodwill and other factors. To determine whether it constitutes a trademark infringement, it is up to the court to make a specific judgment on a case-by-case basis.
※Article 68
Without the consent of the trademark owner, any of the following circumstances constitutes an infringement of the trademark right:
- Using a trademark identical to a registered trademark for the same product or service.
- Using a trademark identical to a registered trademark for similar goods or services may cause confusion among relevant consumers.
- The use of a trademark similar to a registered trademark for the same or similar goods or services may cause confusion among relevant consumers.
Manufacturing, selling, holding, displaying, exporting or importing products or services bearing the same or similar registered trademarks for marketing purposes without the consent of the trademark owner for the use by oneself or others of the same or similar goods or services Labels, hang tags, packaging containers, or items related to services are also infringements of trademark rights.
2. Infringement of the proposed trademark (Article 70 of the Trademark Law):
The professional term for indirect infringement is "fake infringement", commonly known as "free ride" behavior, which means that the infringer aims at famous trademarks and wants to use the same or similar trademarks on different goods or services in order to take advantage of the reputation of other people's trademarks. "Fake infringement" of well-known trademarks.
For example:
- The movie "Cape No. 7" is a well-known movie, but if "Cape No. 7" is used to register health nutrition products, there will be a risk of infringing on other people's famous trademarks, resulting in the failure of trademark registration.
※Article 70
Without the consent of the trademark owner, any of the following circumstances shall be deemed a violation of the trademark right:
- Knowing that it is a well-known registered trademark of another person, but using the same or similar trademark may impair the recognition or reputation of the trademark.
- Knowing that it is a well-known registered trademark of others, but using the words of the famous trademark as the name of one's own company, business name, organization, network domain or other commending business entities, which may cause confusion to relevant consumers or detract from the recognition of the trademark Concerns about sex or reputation.
Liability compensation for trademark infringement
There will be civil and criminal liabilities for trademark infringement. The trademark owner can request the infringer to stop the infringement and destroy the goods and materials that infringe the trademark right; for those who are in danger of infringement, they can request to prevent it.
Civil compensation for trademark infringement
In terms of civil remedies, the trademark owner can request "damage compensation". According to Article 71 of the Trademark Law, there are mainly 4 compensation methods, and the trademark owner can choose one to request compensation:
- The usual benefits of a registered trademark minus the benefits of the infringement (that is, the cost of losses due to infringement);
- Benefits obtained from the infringement (that is, the benefits obtained by the infringer);
- Less than 1,500 times the retail unit price of the trademark-infringing goods (that is, less than 1,500 times the "retail unit price" of the goods that infringed the trademark right);
The damages shall be equal to the amount of royalties received by the trademark owner from authorizing others to use the trademark (that is, the amount that the trademark owner can obtain if he authorizes others to use the trademark).
※The right to claim for damages (intentional or negligent infringement of other trademark rights) shall be extinguished if it is not exercised within two years from the time when the claimant knows that there is a damage and compensation obligor; . (Article 69 of the Trademark Act)
Criminal Liability for Trademark Infringement
As for criminal liability (intention to infringe), according to Articles 95, 97, and 98 of the Trademark Law and Article 38 of the Criminal Law, there are:
- Production of counterfeit goods (Article 95 of the Trademark Law)──Sentence to fixed-term imprisonment of not more than 3 years, short-term detention or a fine of not more than NT$200,000;
- A person who sells, or intends to sell, possesses, displays, exports or imports counterfeit goods made by others (Article 97 of the Trademark Act)──Sentence to fixed-term imprisonment of not more than one year, short-term detention or a fine of not more than NT$50,000 in combination.
- Items or documents that infringe trademark rights, certification mark rights, or collective trademark rights, and items used or prepared for crimes (Article 98 of the Trademark Law, Article 38 of the Criminal Law)──Confiscation
※Case
"NTU Cram School" Infringes Enrollment Enrollment, National Taiwan University Sues! 6.23 million in compensation won in the first instanceNational Taiwan University trademark infringement storm teaches you how to protect your brand 👉https://bit.ly/3BqmDWx
How to protect your rights when encountering trademark infringement
NO.1 Silently collect evidence for notarization
First silently collect the evidence of infringement, such as: from the official website of the infringer, FB, various e-commerce platforms, etc.
NO.2 Send deposit letter or lawyer letter
The main purpose of the deposit letter is to achieve the legal purpose of "evidence preservation" and "information"
NO.3 Reconciliation, whistleblowing or litigation
After sending the letter of deposit, if the other party does not respond or the attitude is tough and a settlement cannot be reached, they can report to the Baozhi Brigade. If a settlement cannot be reached, a lawsuit will be filed by prosecutors.
※Trademark infringed? Goldkeen teaches you 3 steps of rights protection 👉 https://bit.ly/goldkeen55
Before you want to defend your rights, you should first consider the purpose of rights protection, depending on what you want:
- As long as the other party withdraws and immediately changes the logo
- Hope for compensation (settlement money)
- I hope to file a lawsuit so that the other party may have criminal responsibility, and let other colleagues know that we are actively defending rights
In fact, not every trademark infringement is intentional. Therefore, Jinrui reminds everyone, no matter whether we have a new brand today to apply for a trademark, or to carry out trademark authorization (authorized), it is recommended that you entrust a professional trademark firm to help your brand Carry out trademark application protection and planning to avoid unnecessary infringement disputes.
#Trademark big or small, find a "trademark expert
