After the fight for the 2022 Qatar World cup came to a close, a series of new battles in the world of trademarks popped up. In China, media outlets reported on corporations and individuals rushing to register for the Chinese transliterations of the “Messi” and “Mbappe” trademarks, as these star athletes made their top performances in FIFA 2022.
In Taiwan, the Trademark Act provides that a trademark containing a person’s well-known name cannot be registered in general. Given that both “Messi” and “Mbappe” are sufficiently famous to qualify as “well-known names” under the Trademark Act, if an applicant were to file for these trademarks in Taiwan, they are unlikely to succeed. However, what if the applicant were to register for the names of underrated players, who are not yet considered “well-known”? Without the means to remove the mark under the Trademark Act, would the infringed party be able to challenge an application or registration and demand for its removal, based on its right to a name under the Civil Code? This article will delve into these questions by examining the current practice in Taiwan’s legal environment.
Concurrence of the rights to a name and trademark rights
Paragraph 1, Subparagraphs 13 and 14 in Article 30 of the Taiwan Trademark Act set out rules governing marks that use names belonging to individuals and companies. These rules prohibit the registration of marks that use “a person’s well-known name”, as well as “the name of a well-known business or group” when there exists a likelihood of confusion by consumers.
However, Article 19 of the Taiwan Civil Code provides that “If one’s right to use his or her name is infringed, one may petition to the court for removing of infringement and for damages for emotional distress.” As the text in Article 19 does not limit protection to “well-known” names, it appears as though before the court, the infringed party can claim for right infringements under the Taiwan Civil Code, even if they do not qualify to do so under the Trademark Act for not being “well-known” enough. In practice however, Taiwan courts have not held a consistent stance in examining cases relating to the concurrences between the Trademark Act and the Civil Code.
First stance: the Trademark Act does not provide special provisions to the Civil Code.
There are very few Taiwan judgments that pertain to the concurrences between the Trademark Act and the Civil Code, when it comes to “name rights”. In one case (henceforth referred to as the “Eastern Realty Case”), “Eastern Realty Broker Limited Company” (a translation from its Chinese name, hereinafter referred to as the “E.T. Realty”), based on its right to a name under the Civil Code, demanded that another party named “Eastern Realty Co., Ltd. (hereinafter referred to as Eastern Co., which had lost in a previous case between the same parties and is not entitled to use the Chinese equivalent of “Eastern” in its own name)” be prohibited from using the four Chinese characters “東森房屋” (which refers to “Eastern Realty” in English) as a trademark in denoting its services. In the Taiwan Supreme Court Civil Judgment No. 100-Tai-Shang-787, the Supreme Court initially ruled in E.T. Realty’s favor and substantiated this decision by stating that Paragraph 1, Subparagraphs 13 and 14 in Article 30 of the Taiwan Trademark Act are not special provisions connected to the Civil Code; thus, they should be treated separately.
Under this judgment, when the name of a company is used in a third-party trademark registration, the company can use the Trademark Act as well as its right to a name under the Civil Code as the legal bases to remove infringement and claim for damages. Even if the company name is not sufficiently famous to qualify for the disputed trademark’s revocation under the Trademark Act, the infringed company would still be entitled to prohibit the infringing party from using its name as the trademark if the infringing party operates in the same business and filed the application in bad faith.
Second stance: the Trademark Act does provide special provisions to the Civil Code.
However, after the Taiwan Supreme Court overturned the original judgment in the Eastern Realty Case and remanded it back to the High Court, the High Court took a different approach in supporting its decision. The High Court’s stance was that Paragraph 1, Subparagraph (13 and) 14 in Article 30 of the Taiwan Trademark Act is indeed a special provision connected to the Civil Code and its decision ruled against E.T. Realty. And after the High Court’s decision was appealed by E.T. Realty, the case arrived at the hands of the Supreme Court once again. In this later decision – Taiwan Supreme Court Civil Judgment No. 101-Tai-Shang-1868 – the Supreme Court turned its back on its first stance, and changed its position to parallel that of the Taiwan High Court, stating that when Article 30 of the Trademark Act was amended, legislators have already taken the delicate balance between name rights and trademark rights under consideration, summarized as follows:
• The company name must be generally considered well-known, for there to be a need to prevent others from misusing or taking advantage of its fame by rejecting the trademark application/registration associated with the usage of that company’s name.
• If the company name is not generally considered well-known, the legislature permits the registration of a trademark associated with said company name. Both the interests of a trademark owner’s right and that of a company name should be protected. In this scenario, it would be difficult to claim trademark infringement based on the company name protected under the Civil Code.
Therefore, since E.T. Realty is unable to prove that the disputed Chinese characters “東森房屋” have become sufficiently well-known in the realty business to have acquired distinctiveness, E.T. Realty cannot demand that Eastern Co. refrain from registering a trademark using the disputed characters.
Following trends and developments in practice
After the Eastern Realty Case, the Taiwan Taichung District Court Civil Judgment No. 104-Su-144, the Taiwan Hsinchu District Court Civil Judgment No. 107-Zhu-9, and the Intellectual Property and Commercial Court Civil Judgment No. 107-Ming-Shang-Su-10, all cited the holding of the Taiwan Supreme Court Civil Judgment No. 101-Tai-Shang-1868 case to support their respective decisions.
Observing the content of these legal developments, it appears that when a case involves both the rights to a name and trademark rights, courts tend to rule that plaintiffs suing on the basis of an insufficiently well-known name cannot claim infringement via their rights to a name under Article 19 of the Taiwan Civil Code, even if the facts diverge from those in the Eastern Realty Case. These court rulings occur in cases that do not involve registered trademarks incorporating the plaintiffs’ company name, and in cases unrelated to the concurrence between the rights to a name and trademark rights. This, in practice, limits the protection scope over name rights in the Civil Code, which does not require a name to be well-known to qualify for protection. Whether this is appropriate is worth further discussion.
Although currently, Paragraph 1, Subparagraphs 13 and 14 in Article 30 of the Taiwan Trademark Act only protect the “well-known” names of companies and individuals, but Paragraph 1, Subparagraph 15 of the same article provides that a trademark cannot be registered if it is “an infringement of another person’s copyright, patent right, or any other right.” So, if a non-famous individual or company claims name infringement under Article 19 of the Civil Code, and obtains a judgment in their favor, then they could revoke the infringing trademark, under Paragraph 1, Subparagraph 15 in Article 30 of the Taiwan Trademark Act, since the right to a name falls under “any other right” mentioned in this subparagraph. However, the decision made in the Taiwan Supreme Court Civil Judgment No. 101-Tai-Shang-1868 directly eliminated this possibility from the get-go. Whether or not that is appropriate is perhaps worth further discussion as well.
This is a translation of the original article in Chinese, which can be found here. Translation by Emma Chiu.
If you would like to know more about rights to a name (rights of publicity/image rights) or trademark protection, please feel free to contact Ling-ying Hsu at lhsu@winklerpartners.com.
Written February 10, 2023 By Ling-ying Hsu.
Translated on April 7, 2023 By Emma Chiu