The Decision

In this case, the appellee knew clearly that the appellant’s disputed Taiwan trademark existed, but still applied to register its Australian trademark which was highly similar to the disputed Taiwan trademark. The appellee also linked the website of A&B Company, of which he is the representative, to the appellant’s website. This resulted in unfair competition for the appellant within Taiwan’s market and infringed on the appellant’s right to manage its property. Therefore, although the appellee can exercise the Australian trademark rights in the Australian territory if the appellee exercised this trademark right in Taiwan, it may constitute unfair competition for the appellant and infringe on the rights of the appellant’s disputed Taiwan trademark. The appellee's previous behavior infringed on the appellant's rights in a way that was done intentionally in a manner against the rules of morals. (IP COURT 112 mingong shan geng2 zi No.1)

Ching-I Lu’s comments

1. In this case, Appellee has repeatedly purchased shock absorbers from the appellant since 1994. Due to business dealings, he knew the appellant’s Taiwan trademark very well.

2. The appellant (plaintiff) originally requested that the Appellee (defendant) should abandon the Australian trademark in the first instance. Although the first instance judgment ruled to reject the plaintiff's lawsuit, the second instance changed the verdict and ruled that the defendant should abandon the Australian trademark.

3. Thus, we wonder if a defendant maliciously squats the plaintiff's domestic and foreign trademarks, can the plaintiff request the defendant to abandon the trademark, or ask the defendant to compensate the plaintiff for the expenses incurred by the opposing defendant's trademark registration in various countries?

4. In the past, in the other case,102 mingon sue zi No. 5, the defendant maliciously registered the plaintiff’s “PFAFF” trademark in Taiwan and 17 other countries around the world. The plaintiff has to pay a considerable amount to oppose and cancel those trademarks in each country. In that case, the judgment ruled that the defendant should abandon the trademarks registered in Taiwan and other countries, and should compensate the plaintiff for the fees incurred in opposing trademarks in various countries. The main reasons are as follows:

(1)The act of squatting someone else's trademarks goes against the integrity of the business and general social ethics, which constitutes the latter paragraph of Article 184 Ⅰ of the Civil Code. 

(2)This squatting action does not exemplify an unfair competition behavior under the Fair Trade Act, but it can be recognized as "deceptive or obvious unfair conduct that can affect trading order" stipulated in Article 25 of the Fair Trade Act. 

Since the first instance judgment becomes final, it is impossible to get a glimpse of the opinions of the Supreme Court.

5. Before this case was remanded, the Supreme Court 111 Taishan zi No. 2080 judgment held that: “The original instance confirmed that appellant's use of the trademark will enjoy certain economic benefits. The marks Appellee obtained are highly similar to the appellant's trademark, and the Appellee’s web page was an inappropriate link to the webpage created by the appellant. The operating instructions for shock absorbers on the website plagiarized the content of the appellant's webpage. Therefore, can it be said that what the Appellee did does not constitute a tort or is not likely to infringe the rights of the appellant? The original trial did not review the case in detail but made an unfavorable outcome to the appellant, which is still debatable.” 

6. It seems that the Supreme Court also agrees that maliciously squatting can constitute a tort. However, even if it constitutes a tort, can the plaintiff request the defendant to abandon the trademark rights registered in foreign countries? The issue is still unresolved in this opinion of the Supreme Court.