Can Text, Graphics, and Symbols Be Used as Trademarks? A Brief Discussion on the Definition of Trademark Infringement

For a company or product to quickly capture the public’s attention and leave a lasting impression, it’s essential not only for the product to be outstanding but also for it to have an eye-catching or creative and novel trademark. A trademark serves as an important indicator for consumers and the public to identify products and services, helping to distinguish them from other brands.

Under the current Trademark Act, infringement is primarily divided into direct infringement and indirect infringement. What are the differences between these two types of infringement? And what conditions and requirements must be met for an infringement to occur?

• Direct Infringement:
  

  According to Article 68 of the current Trademark Act: "Without the consent of the trademark owner, engaging in any of the following activities for marketing purposes constitutes infringement of trademark rights."

  • Using a trademark identical to the registered trademark on the same goods or services.
  • Using a trademark identical to the registered trademark on similar goods or services, which may lead to confusion or misidentification among consumers.
  • Using a trademark similar to the registered trademark on the same or similar goods or services, which may lead to confusion or misidentification among consumers.
• Indirect Infringement:
  

  Article 70 clearly states: "Without the consent of the trademark owner, any of the following situations is considered an infringement of trademark rights."

  • Knowing that a trademark is a famous registered trademark, using an identical or similar trademark in a manner that may diminish the distinctiveness or reputation of the trademark.
  • Knowing that a trademark is a famous registered trademark, using the name of the famous trademark or its text as the name of one's own company, business, organization, domain, or any other form of business identification, which may cause confusion or misidentification among consumers or may diminish the distinctiveness or reputation of the trademark.
  • Knowing that there is a risk of infringement under Article 68, manufacturing, possessing, displaying, selling, exporting, or importing labels, tags, packaging, or items related to services that have not been combined with goods or services.

Don't Easily Try Selling Counterfeit Goods—Beware of Trademark Infringement and Criminal Liability

How high is the risk of selling counterfeit goods? Can one make huge profits by selling counterfeit products? We strongly advise against testing the waters! Not only does this violate trademark law, but such infringement can also lead to both civil and criminal liability.

What Does Counterfeit Investigation Involve?

When trademarks, patents, intellectual property, inventions, or company products are counterfeited or infringed upon, leading to damage to reputation, business opportunities, assets, and other rights and interests, our company assists clients in collecting evidence to protect their rights and interests.

According to Article 71 of the Trademark Act, when the trademark owner requests compensation for damages, they may choose one of the following methods to calculate the damage:

• According to Article 216 of the Civil Code. However, if the trademark owner cannot provide evidence to prove their damage, the trademark owner may calculate the damage as the difference between the usual benefits obtained from using the registered trademark and the benefits obtained from using the same trademark after the infringement.
• The benefits obtained from the infringement of trademark rights. If the infringer cannot provide evidence of their costs or necessary expenses, the total income from selling the goods shall be considered as the income from the infringement.
• The amount up to 1,500 times the retail price of the seized infringing trademark goods. However, if the number of seized goods exceeds 1,500 items, the total price of the goods will determine the compensation amount.
• The amount equivalent to the royalty fees that the trademark owner would have received for authorizing others to use the trademark. If the compensation amount is significantly disproportionate, the court may reduce it at its discretion.

Criminal Liability

Article 95 of the Trademark Act

Without the consent of the trademark owner or group trademark owner, engaging in any of the following activities for marketing purposes shall be punishable by imprisonment for up to 3 years, detention, or a fine of up to NT$200,000, or both:

• Using a trademark identical to the registered trademark or group trademark on the same goods or services.
• Using a trademark identical to the registered trademark or group trademark on similar goods or services, which may cause confusion or misidentification among consumers.
• Using a trademark similar to the registered trademark or group trademark on the same or similar goods or services, which may cause confusion or misidentification among consumers.

Article 96 of the Trademark Act

Without the consent of the certification mark owner, using the same or similar certification mark on the same or similar goods or services for marketing purposes, which may cause confusion or misbelief among consumers, shall be punishable by imprisonment for up to 3 years, detention, or a fine of up to NT$200,000, or both.

If someone knowingly sells, or intends to sell, and manufactures, possesses, displays, or imports items with a label, packaging, container, or other items with the same or similar certification mark, they will face the same penalties.

Article 97 of the Trademark Act

Knowing that someone is selling goods mentioned in the previous two articles or intending to sell them, or possessing, displaying, exporting, or importing them, shall be punishable by imprisonment for up to 1 year, detention, or a fine of up to NT$50,000, or both. The same penalties apply if the infringement is conducted via electronic media or online platforms.

Don’t Worry About Damaged Interests! Seek Trademark Infringement Compensation According to the Law

If you are concerned that your trademark or related interests are being harmed, you must file a lawsuit in the court or the Intellectual Property Court. According to Article 71, Paragraph 1 of the Trademark Act, when a trademark owner requests compensation for damages, they may choose one of the following methods to calculate the damage:

• According to Article 216 of the Civil Code. However, if the trademark owner cannot provide evidence to prove their damage, the trademark owner may calculate the damage as the difference between the usual benefits obtained from using the registered trademark and the benefits obtained from using the same trademark after the infringement.
• The benefits obtained from the infringement of trademark rights. If the infringer cannot provide evidence of their costs or necessary expenses, the total income from selling the goods shall be considered as the income from the infringement.
• The amount up to 1,500 times the retail price of the seized infringing trademark goods. However, if the number of seized goods exceeds 1,500 items, the total price of the goods will determine the compensation amount.
• The amount equivalent to the royalty fees that the trademark owner would have received for authorizing others to use the trademark. If the compensation amount is significantly disproportionate, the court may reduce it at its discretion.

Case Study: Trademark Infringement Case

Trademark infringement cases are numerous, with one famous example involving the luxury brand Chanel. In the past, Chanel filed lawsuits in Taiwan against others using similar trademarks. In 2016, Chanel filed a lawsuit against a hotel called "Chanel Leisure Hotel," and the court ruled that the infringer had been unfairly benefiting from the brand's reputation for the past 12 years. Based on the business turnover, expenses, and other relevant factors, the court ordered compensation of 3 million TWD.

In 2018, Chanel Group filed another lawsuit against "Xiang Jin Er Spa Leisure Hotel," as the hotel's website, signboard, bed linens, pillowcases, and other items were similar to the registered famous Chanel trademark. This caused consumer confusion and impaired the distinctiveness and reputation of the Chanel trademark. The court awarded compensation of 500,000 TWD.