Well...Taiwan’s IP Office Also Knows the Bonsai Bucket Bag

In Taiwan, for a mark to be protectable under Trademark Act, such a mark must be granted by and registered with Taiwan’s Intellectual Property Office. As such, if a foreign brand does not act quickly enough, sometimes it may find its trademark already being registered by someone else in Taiwan, which makes the brand be in a disadvantageous position.

This is what “could” have happened to “Simon Miller”, the Los Angeles-based fashion brand that is well-known for its Bonsai Bucket Bag in 2016 (https://www.whowhatwear.com/emma-watson-simon-miller-bag). Although it had become famous and gained considerable popularity in the fashion industry, “Simon Miller” did not file trademark registration in Taiwan. On December 21, 2017, a trademark application was filed by a third party, seeking trademark registration for the word mark “Simon Miller” (See below) in Taiwan, designated for goods such as bag, purse, backpack, suitcase, shopping bag, etc.

                                                        Application No. 106081347

Good for Simon Miller and bad for the unknown applicant, there is legal ground for Taiwan’s Intellectual Property Office (“IPO”) to protect the foreign brand and deter suspicious free-rider. Article 30.1.12 of Trademark Act provides that a trademark registration shall not be granted if such trademark “being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application.”

Here, Taiwan’s IPO found the trademark application subject to Article 30.1.12, because:

1.     Before the trademark application was filed, “Simon Miller” as a trademark had already been widely used in products like the Bonsai Bag and the Lunch Bag, which were all highly successful and well-known in the relevant markets, including Taiwan.

2.     “Simon Miller” is not a common or ordinary word in Taiwan. However, the applicant sought to trademark exactly the same word, and intended to use in similar goods such as shopping bag, purse, hand bag, etc. Such similarity could not be explained as “pure coincidence.” Rather, such application is made based on attempt to exploit the earlier used trademark with intent to imitate.

Based on the totality of circumstance, the IPO denied the application accordingly. Clearly, for foreign brand that find its trademark registered by bad-faith imitator, Article 30.1.12 of Trademark Act is a feasible avenue. Of course, instead of seeking ex post remedy when finding one’s trademark already taken by someone else, filing trademark application as soon as possible should always be the better way to protect one’s brand in Taiwan.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RnBlNGR1eDY5eHF4Um9yc1NaeW9BQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true