The Decision

The IP Court issued a criminal decision recently. Trademark rights are based on the principle of territorialism and are deeply regional. The trademark judgment adopts territorialism, and Taiwan’s trademark law should take the Taiwan, Penghu, Jinma, and Jinma regions, which are currently governed by the Republic of China, as its application field.

The beef jerky marked with "KOW KUN" and " KOW KUN &design” on the packaging bag, in this case, was produced by the defendant in Mainland China and put on "Alibaba" and "Taobao" websites established in Mainland China. The beef jerky that the defendant sold on the "Alibaba" and "Taobao" websites had no way of being imported into Taiwan due to importation prohibition.

Therefore, the defendant's sale of beef jerky on the websites of "Alibaba" and "Taobao" is obviously not for the purpose of marketing in the Taiwan market. The prosecutor's appeal still insisted that the defendant's intention was obviously marketing to the Taiwan market, which is unacceptable.

The Comment of Ching-I Lu:

1. The case involved counterfeits, infringed Taiwan trademark and sold by the defendant, which was produced in Mainland China and put on "Alibaba" and "Taobao" websites established in Mainland China.

2. The issue, in this case, is that the defendant's products are sold through websites such as "Alibaba" and "Taobao", which can be purchased by Taiwanese consumers and the goods can be shipped to Taiwan. Additionally, the website shows many traditional Chinese characters and can be paid in Taiwan dollars. Therefore, the prosecutor believes that the defendant intends to market in Taiwan, and Article 95 of the Trademark Law should apply.

3. Regarding the use of trademarks on the Internet, Trademarks Use Precautions issued by TIPO does stipulate: "If the first-level URL of the webpage using the registered trademark is a ".tw" Chinese URL, in principle, it can be considered that the user has the purpose of marketing in the Taiwan market. For example, the webpage displays the registered trademark and sells the goods indicated by the registered trademark, and provides delivery services for consumers in Taiwan, or the page provides options in traditional Chinese, etc.”

4. Therefore, in practice, in a trademark revocation case, if the trademark owner can submit the receipts, invoices, and product catalogs on the shopping network that Taiwanese consumers ordered from the trademark owner through the Internet, it can prove that domestic consumers have purchased goods through the Internet. So that the mark will not be revoked.

5. However, the " Trademarks Use Precautions", according to its "Preface", is: "In order to remind and guide trademark owners to use registered trademarks correctly and legally, so as to effectively maintain trademark rights, these precautions are formulated." Obviously, the "Trademarks Use Precautions " is mainly to regulate the situation of "maintain trademark use", rather than the "infringement use". Then, if the above situation happened in an infringement case, can it also constitute "infringement use"?

6. Actually, the facts of this criminal case are not the same as those mentioned in the "Trademark Use Precautions" above. Because according to the purchase receipt of the defendant products, both the mailing address of the sale and the receiving address on the receipt are in Mainland China.

7. Assuming that the product, in this case, is ordered by Taiwanese consumers from Taiwan and shipped to Taiwan, should there be a different conclusion?

Coincidentally, recently in another case 111 Minshang Suzi No. 32, the defendant company preemptively registered the plaintiff's "固滿德" trademark in Mainland China without the plaintiff's consent and then set up an official website to promote. The motorcycle magazine published in Taiwan offered to sell the "固滿德" tires to consumers in traditional Chinese characters. The place of action and the place of damage were both in Taiwan. The court in this case concluded that the defendant constituted a trademark infringement.