Abstract
Trademark owners are not sufficiently protected by present Trademark Act and regulations in Taiwan. On the contrary, the trademark law in the US has developed a series of principles which provide adequate protection and are therefore worthy of studying: trademark infringement cases can be categorized into trademark infringement and trademark counterfeiting. Remedies for trademark infringement include infringer’s profits as damages, compensation of losses suffered by the trademark owner, litigation costs and attorneys’ fees in exceptional situation (Article 35 of Lanham Act) and injunctions (Article 34 of Lanham Act). In addition, trademark counterfeit is subject to Trademark Counterfeiting Act of 1984. If the defendant has the intention to deceive and its use is likely to cause confusion, mistake or to deceive, and the counterfeit mark is used in connection with the same goods or services as those for which the mark is registered on the Principal Register, the defendant will be criminally punished. According to Article 71 of the Taiwanese Trademark Act, damages can be claimed in accordance with infringer’s profits, losses suffered by the owner, the maximum number of 1500 times of the unit retail price, or possible royalties. The empirical results show that the majority of claim is pursuant to many times of the unit retail price for the ease of burden of proof. Monetary recovery alone is insufficient because present measures of estimating trademark value may easily incorrectly estimate trademark value and the trademark owner may still suffer from economic loss when winning the case. As a result, injunctions in time are needed against trademark infringement. It is suggested that courts in Taiwan take four basic criteria (including the probability of success, irreparable injury, the hardships balance in favor of plaintiff, and public interests) adopted by American law into consideration while granting injunctions. As to trademark counterfeit, the Taiwanese Trademark Act has no specific provision. It is suggested that Taiwan follow the Trademark Counterfeiting Act of 1984.