本 期 提 要HEADLINES
WIPO於2001年9月3日公布網域名稱第二階段研究的最終報告，該報告的全名為「網際網路網域名稱系統內之權利認識與名稱使用」(The Recognition of Rights and the Use of Names in the Internet Domain Name System)，其是以商標之外的標識(identifier)為對象，探討將若干標識作為網域名稱，進行惡意與引人錯誤的註冊行為，以及在網域名稱使用上所可能產生的問題與解決之道，該報告的全文資料讀者可至http://wipo2.wipo.int/ process
WIPO Publishes Final Report of the Second Internet Domain Name Process
WIPO published its final report of the Second Internet Domain Name Process on September 3, 2001. The full name of the report is "The Recognition of Rights and the Use of Names in the Internet Domain Name System", which is concerned with a range of identifiers other than trademarks. It is directed at examining the bad faith and misleading registration and use of those identifiers as domain names, and possible solutions for these problems. Readers who wish to view a full copy of this report may go to:http://wipo2.wipo.int/
Taiwan Finalizes IPR Laws for WTO
As at October 31, 2001 the Legislative Yuan had passed a total of 14 bills geared towards entry to the WTO, a number of which were related to intellectual property rights. Amongst these, the "Draft Partial Amendments to Patent Law" was gazetted by order of the President on October 24 and entered into force on October 26, 2001; the "Optical Media Management Law" was gazetted by order of the President on November 14 and entered into force on November 16, 2001; and the third reading of "Draft Partial Amendments to Copyright Law" was also passed on October 25, 2001.
In Volume 9, Issue 19 of IPR News we had previously discussed the main amendments included in the "Draft Partial Amendments to Patent Law", while in Issue 20 we had discussed the "Draft Partial Amendments to Copyright Law" and the "Optical Media Management Law".
The IPO has recently indicated that the present amendments to the Copyright Law were principally minor amendments made to facilitate entry to the WTO, as well as to achieve consistency with the Law of Administrative Procedures. These amendments would not only bring Copyright Law in line with international protection standards, but would also aid the creation of a sound copyright use and protection environment. Insofar as impact of the Internet on copyright issues is concerned, in accordance with the resolution of the Economic Development Advisory Conference (EDAC), the MOEA had submitted a separate "Draft Partial Amendments to the Copyright Law" to the Administrative Yuan on October 12. Once the Administrative Yuan
oncludes its consideration of these Amendments, they will be submitted for the Legislative Yuan's consideration.
The IPO has also completed amendments to various relevant laws, pursuant to the National
Economic Conference's resolution to "finalize IPR legislation as soon as possible", and the EDAC's resolution relating to creating "Sound Examination Mechanisms for Intellectual Property Rights". Below is an outline of these amendments in table form:
Sound Examination Mechanisms for Intellectual Property Rights
RationalizeIncrease no. of professional examiners revise "IPO Organizational Structure Regulations"IPO Structure(submitted to Administrative Yuan 8.31.01; Administrative Yuan requests MOEA to consultrelevant departments 10.18.01)
Relax channels for professional examiners revise "Qualification Regulations for Patent & Trademark Examiners" (submitted to Administrative Yuan 8.31.01; Administrative Yuan requests MOEA to consult relevant departments 10.29.01)
Revise PatentIntroduce local priority system
Introduce early publication system
Trust over patent rights(90.10.24公布)
Extend patent period to be consistent With TRIPS (preWTO rights extend from 15 to 20 years)
Abolish reexamination system
Permit outsourcing patent examination procedures to private sector
Certificate issued upon approvalConsidered by MOEA 10.22.01
Abolish objection procedures
"Examination of form" for new utility
權三大法修正Revise TrademarkAbolish substantive examination for審查) Speed upLawrenewed registrationsLegislative Yuan committee amendments 增訂邊境管制措施completes consideration
of 3 majorIncrease border control measures10.24.01 IPR laws 增訂得委託民間辦理商標審查業務
Permit outsourcing of trademark(90.8.31報院)examination procedures to privateSubmitted to AY 8.31.01 sector
護、一案多類別、商標在網路上使用規範)Submitted to AY 9.12.01 Strengthen trademark protection &
streamline application procedures (e.g.increase scope of protection, enhance protection of famous marks, multiple class applications, trademarks on Internet)
Uniform copyright terms for Computer3rd reading complete Programs & literary works10.25.01
technical protective mechanisms & protection(90.10.12報行政院of electronic rights management information審議)
修正合理使用規定Submitted to A.Y.revisions to reasonable use provisions10.12.01
修正侵害刑責規定revisions to penalties for infringement
代理人素質Draft Patent Agent Law(78.4.19立法院完成委員會審查)Improve quality of patent Legislative Yuan committee completes & trademark agents2.制定「商標師法」consideration 4.19.89
Draft Trademark Agent Law
Revise patent &amend Trademark Fees Regulationsgazetted 11.1.00 trademark fees
amend Patent Fees Regulationssubmitted to MOEA for review 10.30.01
Information from IPO website: http://www.moeaipo.gov.tw
本案申訴人為享有「CESAR」愛犬食品商標的美商瑪斯公司(Mars Corporation)，其主張「CESAR」商標為著名商標，且註冊人之英文譯名亦與「CESAR」毫無關連。註冊人上和電訊有限公司則主張，該網站站長的英文名字為Cesar Lin，因此以該名作為網站名稱與網域名稱，具有正當性。本案專家小組指出，自網站站主於英文護照上的名字可知，其已多年使用Cesar為其英文別名，而以自己姓名之全部或一部申請註冊為網域名稱，在實務上係屬正常之事；另註冊人早在1995年網際網路尚未發達時即已使用該別名，因此專家小組並不認為註冊人是以搶註該網域名稱的方式，妨礙申訴人使用此一網域名稱。
Domain Name <cesar.com.tw> Remains with Original Registrant
The dispute over use of the <cesar.com.tw> domain name was handled by the Science & Technology Law Center (STLC) of the Institute for Information Industry (III), and a decision was delivered by the panel of experts on October 3, 2001. The panel held that the original registrant, Sunhouse Network Inc., may continue to use this domain name.
The complainant in this case was Mars Corporation, a U.S. company that owned the trademark "CESAR" in respect of dog food products. It argued that "CESAR" is a famous trademark, and the registrant's English name has no connection to the word "CESAR" whatsoever. On the other hand, the registrant Sunhouse argued that the English name of its webmaster is Cesar Lin, and therefore it is proper for Sunhouse to use such name as its website and domain name.
The panel of experts in this case found that the said webmaster has been using the name "Cesar" as his English name for many years, as proven by the name stated on his passport. In practice, it is quite common for applicants to register the whole or part of their names as domain names. In addition, the registrant has been using the name "Cesar" since 1995, long before the Internet has become as popular as it is today. Therefore the panel does not believe that the registrant is interfering with the complainant's use of the domain name by "cybersquatting".
The panel found that even if "CESAR" were a famous trademark, the complainant has used this trademark only in respect of products and advertisements for dog food; further, the complainant's own market research report shows that the proportion of families who use packed wet dog food is not particularly high. Insofar as these families are concerned, "CESAR" is not yet considered a brand, and it is clearly still a long way from becoming the leading brand in the market. Therefore it is by no means certain that Internet users will connect "CESAR" to the complainant.
After conducting a trademark search, the panel of experts has also found that a registrant different from the complainant had registered "CESAR" as a trademark in 1999, in respect of different classes of products (classes 5 and 25). Under the Trademark Law, a person may register an identical or similar trademark in respect of different classes of products, so long as there is no "likelihood of misleading or causing confusion to the public" under Article 37, Paragraph 7 of the Trademark Law. Given that the trademark "CESAR" is registrable for different classes of products, why should a ".com" domain name that does not distinguish between classes of goods or services necessarily belong to the complainant? In any case, as the registrant submits, the complainant is not owner of the domain name "cesar" in other countries such as Japan, Germany and England. Therefore, there appears to be no merit in the complainant's argument that it must be registered owner of the domain name<cesar.com.tw> in Taiwan, and that the domain name must be used for creating a website relating to dog food.Accordingly the panel of experts has rejected the complaint.
法商迪卡隆公司(Decathlon S. A.)向資策會科技法律中心就<Decathlon.com.tw>網域名稱提起爭議處理申訴一案，已於民國90年9月16日由專家小組做出決定：註冊人彰紀公司繼續註冊與使用此一網域名稱。
Decision Issued for Domain Name Dispute over <decathlon.com.tw>
The complainant Decathlon S. A. had requested that the STLC handle the dispute over use of the <decathlon.com.tw> domain name, and a decision was issued by the panel of experts on September 16, 2001: the registrant Chang Chi Company will remain owner and user of the domain name.
The complainant Decathlon S.A. argued that it is a worldrenowned manufacturer and supplier of sport equipment. The name "DECATHLON" is not only the core part of its company name, it is also its trademark and service mark, and enjoys substantial fame in Taiwan as well as other countries. The complainant subm
itted that one of its previous distributors for the "DECATHLON" brand had been Chang Long Company, which may be an affiliate of Chang Chi. Chang Long had previously attempted to register a logo "STEELMAN DECATHLON" with the former Central Standards Bureau, but the complainant had successfully caused the registration to be invalidated. Therefore the registrant has no right or proper interest for registering the domain name in question. In addition, Chang Chi was established to circumvent its previous OEM relationship with the complainant, so that its illicit motive would not be so obvious. Its application for and use of the said domain name is clearly an attempt to free ride on the complainant's business reputation; in addition, the complainant is possessing and using such domain name in bad faith, and has interfered with the complainant's Ecommerce activities using the name.
The registrant Chang Chi on the other hand submitted that the core part of the domain name is the English pronunciation for its "迪卡龍" (Di Ka Long) service mark, and Chang Long and Chang Chi are different corporate entities. The services provided by the registrant can be viewed on its webpage from major portals in Taiwan. Further, the word "decathlon" literally means "ten sports", and is a commonly used word in Englishspeaking countries. The word has also been used in domain names in many countries, and had not been invented by the complainant. The registrant is using the domain name in respect of different services, and has not misled nor caused confusion to the general public.
The domain name dispute in question was handled by Professor Chang YiYun, from the Faculty of Financial & Economic Law of Fujen Catholic University. Although Professor Chang confirms that the complaint had met the first criterion, i.e. "identical or similar to the complainant's trademark", she finds that the complainant has not satisfied its burden of proof in respect of the second and third criteria, being "the registrant has no proper right or interest" and "reg
istering or using the domain name in bad faith".
The panel of experts indicated that the registrant owned the "迪卡龍" (Di Ka Long) service mark, and its business scope and actual operations all differed from that of the complainant. As the registrant submitted, the word "decathlon" indeed means "ten sports", and different persons around the world have registered the word as a domain name or trademark, in respect of different products or services. Even if the complainant's "Decathlon" brand products do enjoy great fame in Taiwan, it is difficult to declare that it is a "famous mark" that is "well known to the relevant public", as the complainant has not provided sales and advertising information in Taiwan. Accordingly, the panel does not believe that the registrant has misled or caused confusion to consumers, or is attempting to derive improper commercial gain by eroding the complainant's registered trademark.
Insofar as the registrant may have registered or used the said domain name in bad faith, the panel found that: although the complainant did prove that Chang Chi and Chang Long have the same registered company address and business items, it did not show that the two companies overlapped in terms of company capital, shareholders or management. Therefore it is difficu
lt to conclude that one is affiliated to the other. In addition, the complainant had not actively proven that the registrant is freeriding on its business reputation; therefore the panel is unable to conclude that the registrant has registered or used the said domain name in bad faith.
In light of the above considerations, the panel decided to reject the complaint and permit Chang Chi to continue using the domain name <decathlon.com.tw>.