What is trademark infringement? What are the forms of trademark infringement? A trademark lawyer in Taipei who specializes in trademark litigation will tell you!

What is trademark infringement? What are the forms of trademark infringement?

As trade becomes more frequent, trademarks are used more widely, and trademark infringements are also increasing. What exactly is trademark infringement will be explained in detail in this article.

1. What is trademark infringement?

Trademark infringement refers to any behavior that violates legal provisions and damages the exclusive rights of the trademark registrant without the permission of the trademark registrant. Trademark exclusive rights, also known as trademark rights, refer to the rights granted by law to trademark owners to control their trademarks, including the right to use, the right to prohibit and the right to dispose of. As far as registered trademarks are concerned, both the right to use and the right to dispose require the trademark owner or the assignee of the trademark right to use the approved registered trademark on the goods or services approved for use; however, the scope of the right of prohibition is not limited to this. The trademark owner can It is prohibited for others to use a trademark that is identical or similar to a registered trademark on goods or services that are identical or similar to the goods or services approved for use without permission.

Article 18 of the Taiwan Trademark Law stipulates that a trademark refers to any identifying mark, which may consist of words, graphics, marks, colors, three-dimensional shapes, motion, holograms, sounds, etc., or a combination thereof. The term “distinguishability” as mentioned in the preceding paragraph means that the relevant consumers of the goods or services can recognize the goods or services as indicating the source of the goods or services and can distinguish them from the goods or services of others.

In addition, Article 33 of the Trademark Law stipulates that the right holder shall obtain the trademark rights from the date of registration announcement, and the trademark rights period is ten years. It can be seen that for an approved and registered trademark, the registrant enjoys the exclusive right to use the trademark and is protected by law in accordance with the law. Any act that infringes upon the exclusive rights of others to register a trademark constitutes trademark infringement.

2. How to identify trademark infringement

Four elements must be present to constitute trademark infringement:

(1) There is illegal behavior

(2) Damage has occurred

(3) There is a causal relationship between the illegal act and the fact of damage

(4) The perpetrator must be intentional or negligent subjectively

Trademark infringement is still essentially a civil infringement. Therefore, the above four basic elements need to be considered in determining trademark infringement. At the same time, we should also pay attention to the particularity of trademark infringement itself.

(1) There are illegal acts

The illegality of the behavior means that the behavior committed by the perpetrator violates the provisions of the Trademark Law and other relevant laws, that is, the perpetrator uses the same trademark registered by others on the same or similar goods without the permission of the trademark registrant. or similar trademarks, or behaviors that hinder the trademark registrant from exercising the exclusive right to use the trademark. The existence of trademark violations is a prerequisite for the formation of infringement.

(2) Damage has occurred

The fact of damage is a special condition in trademark infringement. As for the fact of damage, it can be material damage or non-material damage. Material damage is the reduction or elimination of the trademark registrant’s economic interests. Non-material damage refers to the damage or disparagement of the right holder's product reputation and corporate image due to infringement of the exclusive right to use a trademark. Non-material damage is intangible and cannot be calculated at the time, but it will eventually lead to the loss of property interests of the right holder. In practice, the identification of material damage must be provided by the infringed party, but it is very difficult to provide evidence for the identification of non-material damage, so there is no need for the infringed party to provide evidence. As long as there is an illegal act, it will be deemed to have non-material damage, and the infringed party can request to stop the infringement.

(3) There is a causal relationship between the illegal act and the fact of damage

The fact of damage is different, and the causal relationship is also different. If an illegal act that infringes upon the exclusive right to use a trademark causes the objective existence of the fact of damage, then the violation and the fact of damage form a causal relationship. For example, if a counterfeit brand of wine is of very poor quality, consumers will mistakenly think that the quality of the brand has declined after drinking it. This means that there is a causal relationship between the infringement and the damage. If the damage occurs due to other reasons, it does not constitute a constitutive element of trademark infringement.

(4) The perpetrator’s subjective intention or negligence

Regardless of whether the infringer is intentional or negligent, he shall bear legal liability.

3. Patterns of trademark infringement

(1) Using a trademark that is identical or similar to the registered trademark on the same or similar goods without the permission of the trademark registrant; this is the most common and typical direct infringement of the trademark owner's prohibition in reality. This kind of behavior can be divided into four situations:

1. Using the same trademark as a registered trademark on the same product is considered counterfeiting.

2. Use the same trademark as the registered trademark on similar goods

3. Use a trademark similar to the registered trademark on the same product

4. Use a trademark similar to the registered trademark on similar goods.

(2) Selling goods that infringe the exclusive rights of registered trademarks; as mentioned above, the current sales of goods that infringe trademark rights no longer require the seller to be subjectively at fault (intentional or negligent).

(3) Counterfeiting or unauthorized manufacturing of other people’s registered trademarks or selling forged or unauthorized registered trademarks; manufacturing or selling trademarks is not the act of using a trademark, but it provides convenience or assistance for the final completion of the infringement, so in In law, some people refer to this as indirect infringement.

(4) Without the consent of the trademark registrant, change the registered trademark and put the goods with the changed trademark back on the market.

(5) Deliberately providing warehousing, transportation, mailing, concealment and other convenient conditions for infringement of the exclusive rights to registered trademarks of others. Although the behavior stipulated in this item does not directly cause infringement due to use, this behavior together with the use of other people's trademarks has objectively caused the consequences of trademark infringement.

(6) Prominently using words that are the same or similar to others’ registered trademarks as the company’s font size on the same or similar products may easily cause misunderstandings among the relevant public.

(7) Copying, imitating, or translating a well-known trademark registered by others or using its main part as a trademark on different or dissimilar goods, misleading the public and causing possible damage to the interests of the registrant of the well-known trademark.

(8) Registering words that are the same as or similar to others’ registered trademarks as functional variable names, and conducting e-commerce transactions of related goods through the functional variable names, may easily cause misunderstandings among the relevant public.

4. Issues that should be paid attention to when identifying trademark infringement

(1) The exclusive right to register a trademark is limited to the trademark approved for registration and the goods approved for use.

When comparing the allegedly infringing objects with the registered trademarks and the trademarks approved for use, first, the registered trademarks and goods recorded on the plaintiff’s trademark registration certificate shall prevail, rather than the actual trademarks used and the actual use of the trademarks. Second, the comparison must be made from two aspects: the trademark and the goods on which the trademark is used, and cannot only be compared on the trademark or only on the goods on which the trademark is used.

(2) Determination of identical or similar trademarks

Definition of identical or similar trademarks: The so-called identical trademarks mean that there is basically no visual difference between the trademark accused of infringement and the plaintiff’s registered trademark. The so-called similarity of trademarks means that the trademark accused of infringement is similar to the plaintiff's registered trademark in terms of the glyphs, pronunciations, meanings, or the composition and color of graphics, or the overall structure of the combination of its elements, or its three-dimensional shape, The similar color combinations may easily cause the relevant public to misunderstand the source of the goods or think that their sources are specifically related to the plaintiff's registered trademark.

Principles to be followed in determining whether trademarks are identical or similar: First, the general attention of the relevant public shall prevail. The so-called relevant public refers to consumers related to a certain type of goods or services identified by a trademark and other operators who have a close relationship with the marketing of the aforementioned goods or services. That is to say, the relevant public includes two parts. Among these two parts of the public, any part of the public involved is the relevant public under the law. It does not mean that both parts of the public are involved to constitute the relevant public under the trademark law. Second, it is necessary to compare not only the overall trademark, but also the main parts of the trademark. The comparison should be conducted separately with the comparison objects isolated. Third, to determine whether the trademarks are similar, the distinctiveness and popularity of the registered trademark requested for protection should be considered.

(3) Determination of similar goods, services and similarity between goods and services

Definition: Similar goods refer to goods that are identical in terms of functions, uses, production departments, sales channels, consumer objects, etc., or that are generally believed by the relevant public to be specifically related and likely to cause confusion. Similar services refer to the purpose, content, method, objects, etc. of the service, or services that the relevant public generally believe have a specific connection and are likely to cause confusion. The similarity between goods and services means that there is a specific connection between the goods and services, which can easily confuse the relevant public.

Criteria for judging whether goods or services are similar: To determine whether goods or services are similar, a comprehensive judgment should be made based on the general understanding of the goods or services by the relevant public.

5. Summary

In order to maintain the socialist market economic order and protect the legitimate interests of registered trademark registrants, we must increase efforts to protect trademark rights and seriously investigate and deal with trademark infringements. To investigate and deal with trademark infringement, one must first have the ability to correctly identify trademark infringement. Therefore, in-depth study of the issue of identifying trademark infringement not only has theoretical significance, but also has certain reference functions for legal practice.

Further reading:What should I do if a trademark infringement occurs? Legal measures that can be taken.

Further reading:What are business secrets? Three major legal requirements for business secrets.

Further reading:What should I do if an employee takes away company confidential information? Relevant provisions of the Trade Secrets Act.

Fuda Law Firm, composed of a team of lawyers, patent attorneys and patent engineering teams who specialize in patents and trademarks. They specialize in the field of intellectual property law. The team lawyer members all have rich practical experience and long-term experience in serving listed companies and small and medium-sized enterprises, and can provide assistance. . If you have any needs, you can contact our firm at any time.

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