Can companies in Taiwan use the names of brands like "HTC", "Asus", "Acer", "Apple" or "Nokia" in their English company names? The civil trademark infringement case INTEL CORPORATION vs. INTEL-TRANS CO. LTD has drawn much attention and touched off heated debate.

The case involves a Taiwanese trading company that combined the words "Intel" with "Trans" and registered their English name as "Intel-Trans"—leading, unsurprisingly, to a suit by Intel Corporation. In a decision released on 1 June 2010, the Taiwanese Supreme Court sided in favor of Intel-Trans, establishing that using a company name in a reasonable way for customs declaration, operational and administrative purposes, without promotional intent, would not establish a competitive relationship between the two companies. As a result, the name does not"diminish the recognition or reputation" of Intel Corporation and does not infringe the well-known trademark "Intel".

In addition to well-known international companies, domestic companies, including Acer, ASUS and HTC, have paid great attention to the decision. These Taiwanese hi-tech industry giants expressed worries that this decision will allow any company to use well-known trademarks in its English company name, confusing the market and diminishing their brands' reputations.

In response, the Taiwan Intellectual Property Office (TIPO) pointed out that Trademark Act Article 62 Subparagraph 1 prohibits:

"Knowingly using a trademark identical or similar to a well-known registered trademark of another person, or using the word(s) contained in the said well-known trademark as the company name, trade name or domain name or any other representation identifying the body or source of business, and hence diluting the distinctiveness or reputation of the said well-known trademark".

Therefore, according to TIPO, utilizing the trademark of a well-known international company in the English name of a company is restricted under the clause "any other representation identifying the body or source of business".

Gray Area
However, the Supreme Court interpreted the term "company name" stated in the Article as referring only to the company name registered under the Company Act.  According to Paragraph 5 of the "Rules for Examination and Approval of a Company Name", which was authorized and formulated from Company Act Article 18 Paragraph 4, "the registered company name should use the country's official written language, and is limited to the written words that are listed in the Mandarin dictionaries that are edited by the Ministry of Education." Simply speaking, the registered company name is in the official written language of Taiwan—Mandarin Chinese.

In contrast, no regulations in the Company Act require registration of a Taiwan's domestic company's English company name. Hence the Court's opinion was that the English company name "Intel-Trans Co., LTD." registered at the Bureau of Foreign Trade (BoFT) is not included in the protection scope of Article 62. In the retrial, TIPO agreed with the opinion. 

Amendment of Trademark Act
In order to address this controversial issue, TIPO has already proposed an amendment to the Trademark Act to modify the current provision,"any other representation identifying the body or source of business", to "any name identifying the body or source of business". In addition, TIPO also suggested that the provision indicate clearly that English company names registered at the BoFT are included. TIPO states that that the amendment of the Trademark Act clearly states that a company is forbidden to use another company's well known trademark in its English name, and that all should respect the IP rights of their owners before the amendment to the Trademark Act is passed.