Does it infringe one’s trademark right to recycle and sell one’s wasted batteries without changing the trademark logo and package but showing “recycled battery” on the products only?
According to the Article 35.I & II, “ The proprietor of a registered trademark has the exclusive right in the trademark in relation to the designated goods or services.
Unless otherwise prescribed in Article 36 of this Act, consent of the proprietor of a registered trademark shall be required in any of the following:
(1) using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2) using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.”
When a third party, in the course of trade and without consent of the proprietor of a registered trademark, constitutes infringement of the right of the trademark by (1) using a trademark which is identical with or similar to the registered trademark in relation to goods or services which are identical with or similar to those for which it is registered; or (2) causing a likelihood of dilution of the distinctiveness or reputation of a well-known trademark, the proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement and claim for relief and penalties according to the Articles 68, 69, 70, 95 and 97 of Trademark Act. The trademark infringer should bear the civil and criminal liabilities arising therefrom.
When a third party recycles others’ wasted batteries and sells them after cleaning, restoring and recharging the batteries, it is an act of trade regulated by the Trademark Act. According to a legal judgment made by the IP Court (No. 48 of criminal judgment in 2009), the third party should remove the trademark logo before selling when the new toner is refilled in a recycled toner cartridge, or he/she will violate the Trademark Act since the contents of the products and the quality thereof have been different from those of the original (genuine) ones.
However, whether or not it infringes one’s trademark right to recycle and sell one’s wasted batteries without changing the trademark logo and package but showing “recycled battery” on the products only, it belongs to the power of judicial authorities depending on various factors case by case, such as the allegations made and evidence submitted by two parties.
In the TIPO’s opinion, a third party should remove the original trademark logo and affix an obvious indication to show that the products are recycled ones in order to avoid the consumers’ confusion or misunderstanding about source of the products. In addition, the treated and re-sold products should not cause the dilution or unfair influence of the reputation of the original trademark due to the change of the appearance and function or the problem of safety of the recycled products.
Source: TIPO’s website: http://www.tipo.gov.tw/ct.asp?xItem=364733&ctNode=7050&mp=1
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
