Article 33, Paragraph 1 of the current Trademark Act, and Article 27 of the Trademark Act before amendment stipulate that “the proprietor of a registered trademark shall have the exclusive right of the trademark from the date of publication of the registration.” Article 32, Paragraph 1 of the Trademark Act before amendment stipulates that “any changes to a registered trademark shall be entered and recorded by the Registrar Office.” (It is equivalent to Article 33, Paragraph 1 of the current Trademark Act, where Articles 24 and 25 should be applied mutatis mutandis.) A registrant acquires no trademark rights and cannot enforce any trademark rights against others before the trademark registration is published.

Article 61, Paragraph 1 of the Trademark Act before amendment stipulates that, “a proprietor of a registered trademark may claim for damages from a person infringing his trademark rights, and may request for prohibiting infringement thereto; in case of likelihood of infringement, the said right holder may also request for the prevention thereof.” (Article 69, Paragraph 1 of the current Trademark Act stipulates that “a proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to prohibit or prevent such infringement.”)

The appellant’s claim, based on unjust enrichment and torts, to change the registrant of the trademark from the appellee to the appellant, is not without merits.

However, the appellant acquires no trademark rights before he receives the judgement favoring him and makes record of the change at TIPO (Taiwan Intellectual Property Office) based on the judgment. The appellant with no trademark rights cannot base his claims on Article 61, Paragraph 1 of the Trademark Act before amendment to exclude the appellee from using the trademark identical to or similar to the trademark in dispute. Nor can the appellant prohibit the appellee from further infringement on the trademark.

Accordingly, before the appellant acquires the trademark rights, his claims to exclude appellee from using the trademark identical to or similar to the trademark in dispute, and from further infringement on the trademark, on the basis of unjust enrichment and torts, are without merits.

Therefore, the appellant’s claims to exclude and prevent trademark infringement are without merits and should be dismissed.

Change to Application for Trademark Registration