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Intellectual Property and Commercial Court

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2012 Min Shang Shang Yi Zi No. 1

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Decision No. 2012 Min Shang Shang Yi Zi No. 1
Date August 16, 2012
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Article 30, First Half Section of Paragraph 2 of the Former Trademark Act stipulates that “where goods have been put on the market for trading under a registered trademark by the proprietor or with his consent, or have been auctioned or disposed of by an applicable authority, the proprietor is not entitled to claim trademark rights on such goods.” Said provision is also known as the “Principle of Exhaustion” or “First Sales Doctrine” for a trademark right, which means that when a trademark holder or licensee sold or circulated goods provided with the trademark in the market for the first time, she or he has received payment therefrom, and therefore, there existed an implied license to use the trademark during the vertical resale process where the goods provided with the trademark were sold from the manufacturer to the retailers and then to consumers. As a result, the trademark right has been exhausted after the first sales of the goods, so the trademark holder should generally not be able to claim her or his trademark right when the goods have been circulated in the market again. The “Principle of Exhaustion” can be divided into the “Principle of National Exhaustion” and the “Principle of International Exhaustion” due to the effects thereof. The “Principle of National Exhaustion” means that the proprietor will only exhaust her or his right after the goods have been sold domestically, and the right has not been exhausted if the goods entered the domestic market from abroad for the first time, so the proprietor can still claim her or his right. On the other hand, the “Principle of International Exhaustion” stipulates that the exhaustion of rights takes place right after the goods have been circulated in the market under proprietor’s consent for the first time either domestically or overseas, so the proprietor will not be allowed to claim any right upon the goods. In light of the major function by a trademark that is served to identify the source of the goods and services, while the trademark is attached onto goods legitimately by the trademark holder or licensee, there will be no likelihood of confusion by consumers regarding the source of goods, and while the quality thereof is identical, there will be no damages occurred upon the goodwill of the trademark holder or licensee, so as to prevent the market from monopolization and exclusiveness, and also to promote free competition of price upon same goods, the consumers thus can take advantage of purchasing goods in a reasonable price, and the legislative purposes of “protecting the rights of trademark and the interests of consumers” as well as “maintaining fair competition of the market” stipulated in Article 1 of the Trademark Act are fulfilled accordingly. As a result, the Taiwan Trademark Act adopts the “Principle of International Exhaustion,” and therefore, there shall be no trademark infringement while importing goods from abroad with the trademark used under consent by the trademark holder or licensee.

Relevant statutes Article 30, First Half Section of Paragraph 2 of the Former Trademark Act (Article 36, First Half Section of Paragraph 2 of the Current Trademark Act)
  • Release Date:2020-11-13
  • Update:2020-12-07
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