經通國際智慧產權事務所

On April 1, 2010, for the trademark litigation which has been previously remanded twice, the Intellectual Property Court (IP Court) partially reversed the previous decisions and ruled against Intel Corporation (Intel). Therefore, the appellant, INTEL-TRANS CO., LTD., may then accordingly maintain the part of “Intel” of its English company name.

In the said decision, the IP Court confirms that the appellant’s bona fide use of the English word “Intel” does not constitute trademark infringement. The IP Court also notes that the appellant’s registered company name in Chinese is neither identical nor similar to the appellee’s trademark “Intel”, and the appellant’s English name of “INTEL-TRANS CO., LTD.” is not in Chinese and thus does not qualify as the “company name” regulated in Article 62-1 of Trademark Act.

In addition, regarding the trademark dilution claimed by the appellee, the Court noted that because the appellant’s operation mainly falls in the field of shipping agency without producing any products, and is much different from the computer industry of the appellee, the appellant’s use of its said company name in English is reasonable and bona fide.

Based on the said reasons, the IP Court partially rejected the previous decision by the Taipei District Court. The IP Court invalidated the previous decision regarding the litigation expenses and the prohibition against the appellant’s use of English company name including “Intel”. On the other hand, the IP Court confirmed the previous decision regarding ordering the appellant to pay the appellee the compensation of NTD550,000 and publish declarations in several national newspapers. However, the decision is subject to further appeal.

Organized and translated by Akina Pan

International Affairs