CONDITIONS FOR INFRINGE-MENT OF TRADEMARK BY COMPANY NAME

01/01/2009

---

According to Article 62 of the Trademark Act, infringement of trademark shall be deemed to have taken place if any person or entity knowingly uses a trademark identical or similar to a well-known registered trademark of another party, or uses the textual portion of such a well-known mark as its company name; or if any person or entity knowingly uses the textual portion of a registered trademark of another party as its company name, thereby causing confusion or misidentification among relevant consumers of goods or services. However, opinions have been sharply divided in practice as to whether the wording of Article 62 refers only to an "outcome" in the form of "actual" dilution, harm, or confusion, or whether the likelihood of such an outcome is a sufficient basis for finding that infringement has occurred.

In a judgment dated 13 November 2008 in a case of alleged infringement by use of a trademark as a company name, the Intellectual Property Court held that the application of Article 62 of the Trademark Act should be limited to an outcome in the form of actual dilution, harm, or confusion, and that the burden of proof regarding such specific outcomes lies with the trademark rights holder.

The court also noted that a necessary condition for the application of Article 62 is that the alleged infringer "knowingly" used text from another's well-known registered trademark or registered trademark. Thus if registration of the trademark concerned had not yet been approved at the time of the company's establishment and registration, then it follows that the alleged infringer could not have been aware of the other party's registered trademark, and the provisions of Article 62 could not apply.