In today's highly competitive market, registering a trademark is no longer a privilege reserved for large enterprises. More and more small and medium-sized businesses, as well as long-established brands, are applying for trademarks based on their needs. This not only increases the recognition of their products but, if marketing strategies are effective, can also help build a strong brand image. The advantage of registering a trademark is that it grants exclusive rights, allowing businesses to prevent others from using the same or similar trademarks and profiting from them, as well as avoiding damage to their corporate reputation due to the actions of others. This article will introduce readers to the basic definitions of trademarks and trademark rights, analyze the standards for determining trademark infringement, and explain how to seek legal remedies when your trademark is counterfeited.

What is a trademark?

According to Article 18, Paragraph 1 of the Trademark Act: "A trademark refers to any sign with distinctiveness that can be composed of words, graphics, symbols, colors, three-dimensional shapes, motion, holograms, sounds, or a combination thereof." Paragraph 2 of the same article states: "The distinctiveness mentioned in the previous paragraph refers to the ability to make consumers recognize the source of the goods or services and distinguish them from those of others."
In simple terms, a trademark, or commonly known as a logo, is a sign used to distinguish the source of goods or services. It helps consumers identify products or services from different companies or brands. The form of a trademark can vary, and the table below provides a brief introduction to some common types (detailed trademark registration information can be searched through the Intellectual Property Office's trademark search system)：

The above are several common types of trademarks. If you are unsure whether a trademark has already been registered by someone else, you can search online using the "Intellectual Property Office of the Ministry of Economic Affairs - Trademark Search System." By entering keywords or performing an image search in the search bar, you can gather relevant information.

The principle of legally obtaining trademark rights: Registration Protectionism.

According to Article 2 of the Trademark Act: "To obtain trademark rights, certification mark rights, collective mark rights, or collective trademark rights, one must apply for registration in accordance with this law." Our country adopts a "registration protectionism" approach to trademark rights, meaning that a trademark must first be applied for registration with the Intellectual Property Office of the Ministry of Economic Affairs. After passing the examination, the trademark owner can enjoy trademark rights, which are protected by law. The scope of protection includes:

1. Exclusive rights: The trademark holder has exclusive rights to use the trademark and can prevent others from using the same or similar trademark.

2. Authorization for others to use: The trademark holder can authorize others to use the trademark and charge royalties and licensing fees.

3. Exclusion of others' use: The trademark holder has the right to exclude others from using the trademark on the same or similar goods and services, preventing others from profiting from the brand value created by the trademark (i.e., "free riding") or causing damage to the brand's reputation through inappropriate actions or statements.

Exceptions: Prohibition of malicious registration and good-faith prior use.

In general, if a trademark has not been registered with the competent authority but has only been used, it will not receive full legal protection. However, the law provides exceptions, such as the case where Company A, in the early stages of its business, was a small and unknown store and did not register its trademark. Later, as the business grew, Company B, seeing the increasing reputation of Company A’s brand, registered the same trademark and obtained the trademark rights, causing consumers to mistakenly believe that B's products were provided by A, thus profiting from it.

In such cases, to prevent Company A's interests from being harmed, the Trademark Act specifically prohibits "malicious preemptive registration of famous trademarks" and provides for "good-faith prior use." According to Article 30, Paragraph 1, Item 11 of the Trademark Act:"A trademark shall not be registered if it is identical or similar to another person’s famous trademark or mark and is likely to cause confusion or misidentification among the relevant public, or is likely to impair the distinctiveness or reputation of the famous trademark or mark." Also, Article 36, Paragraph 1, Item 3 of the same law states: "The following situations are not subject to the effect of another person's trademark rights: ... 3. Good-faith use of an identical or similar trademark on the same or similar goods or services before the trademark registration application by another person. However, this is limited to the goods or services originally used, and the trademark holder may require the addition of appropriate distinguishing marks."

In simple terms, as long as Company A can prove that it is a "good-faith prior user" and has been using the famous trademark long and continuously before B’s registration without intentionally competing with B, A can continue to use the trademark as a non-trademark holder by exception. Of course, Company A can also choose to file an opposition or request an evaluation with the Intellectual Property Office of the Ministry of Economic Affairs within the legal period, aiming to cancel B's trademark and re-register it, thus becoming the legitimate trademark holder.

What actions constitute trademark infringement? 

If someone uses another person's registered trademark in commercial activities without authorization, it may be considered a trademark infringement, and the trademark holder can file a lawsuit and seek compensation. There are two types of trademark infringement: direct infringement and constructive infringement:

1. Direct Infringement

This refers to a situation where a person uses the same or a similar trademark for profit without the trademark holder's consent, leading consumers to mistakenly believe that there is some connection between the two or that the third party has obtained authorization. This results in a reduction in the trademark's distinctiveness and brand value. For example, using the logo "odidos," which is similar to the well-known sports brand "adidas," and printing it on poorly made, unevenly priced sneakers with the intention of confusing consumers.

2. Constructive Infringement

This refers to a situation where a person does not directly engage in commercial activities but still uses another's trademark without authorization, including indirect methods such as marketing or promotional activities. The goal is to gain brand benefits created by the trademark through unfair competition. For example, an educational company uses the trademark "NTU" (National Taiwan University) as its company and website name. Although it is not directly related to "National Taiwan University," the high recognition of "NTU" among consumers still causes confusion, impacting the brand value of National Taiwan University.

Legal liability for trademark infringement.

After discovering that their trademark rights have been unlawfully infringed upon by others, the trademark holder can make the following claims in court:

1. File a Civil Lawsuit

According to Article 69 of the Trademark Act, the trademark holder can request the court to immediately stop the infringer from continuing to use their trademark and demand the destruction of infringing goods, labels, packaging, and tools or instruments used for infringement to prevent further infringement. Additionally, for intentional or negligent infringement of trademark rights, the trademark holder can also request compensation for damages.

2. Pursue Criminal Liability

According to Articles 95 and 96t, if someone sells, manufactures, or imports counterfeit goods without consent, the infringer may face criminal liability, including imprisonment for up to 3 years, detention, or a fine of up to NT$200,000. In addition to Article 95 of the Trademark Act, trademark infringement may also involve general criminal law!

(Extended reading: Trademark Act | Trademark Infringement and Criminal Liability?!)

Whether through civil or criminal lawsuits, trademark holders can effectively protect their legal rights and select the appropriate means to curb infringement, which helps protect their trademark's market position and brand value.

Taking timely legal action to protect your trademark rights

Trademark rights are not only the property of a business but also the foundation of fair market competition. When companies and businesses legally register their trademarks and obtain trademark rights, they not only protect their own interests but also help consumers freely choose the source of goods or services, ensuring fair market competition and preventing deceptive practices. If you are facing legal issues related to trademark rights, please do not hesitate to contact us. Our professional legal team is here to provide strong support and safeguard your business interests through legal means.

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