Unitalen Gains Success in Taiwan

January 4, 2005

Unitalen Gains Success in Taiwan
In September 2003 well-known Chinese trademark “Zhongshen” was registered in bad faith in Kaohsiung City, Taiwan. Upon discovering the fact, Zhongshen Group entrusted Unitalen Attorneys at Law to handle the infringement case. On December 22, after one year of strenuous efforts, the Intellectual Property Office with the Taiwan Ministry of Economy examined the case and ultimately turned down the Taiwan-registered Zhongshen trademark.

As explained by the attorney for the Zhongshen case, Unitalen (Chongqing) Director Junde Luo, a businessman named Anliang Chen from the Taiwan Kaohsiung City registered in bad faith the “Zhongshen” trademark for motor vehicles, bicycles, etc and parts thereof, and entered the preliminary examination stage of the Intellectual Property Office with the Taiwan Ministry of Economy. Meanwhile, Zhongshen Group became aware of the registration and hastily contacted Unitalen Attorneys. A decision was taken to immediately file an appeal for protection of Zhongshen Group’s intellectual property.

Unitalen entrusted its Taiwan based partner to file the necessary documentation with the Taiwanese authorities, claiming that the Taiwan-registered trademark was significantly similar to that of the plaintiff, which constituted registration in bad faith of a well-known trademark and infringement on Zhongshen Group’s intellectual property rights.

According to the Taiwanese Intellectual Property Office, businessman Chen’s trademark was similar to that of Zhongshen Group and could easily mislead customers on the origin of the goods. Zhongshen Group has registered its trademark not only in China mainland, but also in other countries around the world. Zhongshen Group’s motorcycles enjoy good market presence in both China mainland and overseas, and are regarded by customers as a famous brand name. Newspaper reports also qualify them as a famous trademark.

The examination showed that the Taiwanese trademark and the products for which it was used were similar to the plaintiff’s, can easily mislead customers on the origin of the products, and was therefore rejected.

This case of successful protection of intellectual property in Taiwan brings a valuable experience to enterprises striving to get their trademarks protected overseas. As explained by Unitalen (Chongqing) Director Junde Luo, a number of motorcycle companies from Chongqing City have been facing cases of registration in bad faith in countries like India, Iran, Argentina, Spain Nigeria and Vietnam. When such circumstances occur, the companies continue using their own trademarks in the respective countries only upon disbursement of a hefty sum to the other party or through buyback. For the right of using one’s own trademark, this is obviously an unacceptable price.

A good choice for enterprises is to carry out all necessary work for overseas trademark protection, including timely filing of trademark applications in all business related countries and regions. And, of course, registrations in bad faith should be also submitted within the prescribed time limits; otherwise, financial and time costs of protection may rise unpredictably. Protection with legal means has proved to be the most efficient way of IPR protection.