Since the name of a company will necessarily be used for a period of time, the act of registering for the name of the company shall be considered completed at the time of registration, and the continued use of the name of the company shall be held as the extension of the same act, instead of a new act. Therefore, the determination on whether the“○○○○有限公司(○○○○LLC),” the name of the defendant’s company, has infringed the trademark at issue shall be based on the Trademark Act in force in 1998, in which year the defendant registered the name as the company name. Otherwise, if the companies shall comply with the Trademark Act at the time when accused of infringement, the result may vary with the time when the plaintiff brings the lawsuit due to the frequent change in the legal elements of the rule, or the time plaintiff claims. It is unfair for an entrepreneur who builds the reputation of the company with a specific name. Nevertheless, an infringement means that a third party illegally interferes with the exercise of the exclusive right of a trademark, and the proprietor of a registered trademark has no obligation of tolerance.

The infringement shall have happened in reality and existed continually. If the infringement was in the past, what is left is only the problem of damages. The phrase of “likely to infringe the trademark right” means that based on the determination of the existing risks, the trademark right is likely to be infringed, and that it is necessary to prevent in advance, although the infringement has not yet occurred. However, the likelihood that the infringement has occurred and will continue to occur is not necessary. Moreover, it is a requirement that the infringement still exist at the present time. The judgment upon the likelihood of the infringement shall be based on the existing risks. Therefore, the legal basis of the rule shall be the Trademark Act in force at the present time (referring to Supreme Court decision No. 1998-Tai-Shang-2319).

The judgment on whether the “○○,” the name of the defendant’s company, has infringed the right of the trademark shall be based on the Trademark Act in force in 1998, when the defendant registered the name as the company name. Even if the defendant had infringed the plaintiff’s rights, to determine whether the defendant has still infringed the plaintiff’s right, the court must look to the Trademark Act currently in force. It is because the infringement which can be deterred has to be existing. On the contrary, if the defendant’s act did not infringe the plaintiff’s right, although the act corresponds to Article 70 subparagraph 2 of the Trademark Act currently in force, the plaintiff still cannot demand the defendant to stop the infringement based on Article 70 subparagraph 2 of the Trademark Act due to the principle of non-retroactivity of law.

Registered trademark as the name of a company