Information, Sign and Audience — The New Approach to the Analysis of Geographical Certification Mark Under Trademark Law

• Main Authors: Chen, Si-Yu, 陳思宇
• Other Authors: Wang, Min-Chiuan
• Format: Others
• Language: zh-TW
• Published: 2016
• Online Access: http://ndltd.ncl.edu.tw/handle/3ab6u7

碩士 === 國立交通大學 === 科技法律研究所 === 105 === From “Bordeaux” wine to “Darjeeling” tea, and “SWISS MADE” watch to “100% lamb wool”, all contain geographical indications (hereinafter “GI”) protected by the World Trade Organization (hereinafter “WTO”). GIs identify a good’s origin within the territory, region locality of a Member, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographical origin. Taiwan is specifically famous for its local products but counterfeiting is rampant in the international market. After joining WTO in 2002, Taiwan passed the new trademark act which included “geographical certification mark” and “geographical collective trademark”to protect some specific products with strong geographical association in Taiwan. Taiwan currently has 32 geographical certification mark, including “Chih Shang Rice”, “Yan Chao Guava” and “Sun Moon Lake Black Tea". Even though geographical certification marks are stipulated under trademark act, there are many differences between trademarks and the geographical certification marks. This paper focuses on geographical certification mark and applies semiotics, linguistic approaches and information-cost theory to analyze the multiple trademark stages including registering, use and infringement. Any kind of symbol could be considered as a way to communicate and send information. With regard exercising rights, I apply the communicative tradeoff theory to analyze the community’s culture, customs and values behind the geographical certification mark—how they exchange information intensively within and communicate their custom to the outside public across many cultural contexts. The paper further explores how the trademark act designs a unique “semicommon” system, which protects the special association between a good and a place in the geographical certification marks and avoids strategic behavior. In the stage of infringement, the courts have split rationales when the infringement happens. The reason is judges do not have the consensus on what interest the dilution of trademark protects. In order to answer the question, this paper incorporates the dilution theory proposed by Frank I. Schechter, who argued that “the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection.” Under his theory, the requirements for trademark dilution are only limited to famous marks and applies the mark in the non-competed market. However, due to the differences between trademarks and geographical certification marks, the anti-dilution law doesn’t apply directly, resulting in limited protection for marks. Therefore, this paper proposes a novel framework to be adopted into the trademark act, to protect geographical certification marks, against unfair advantage taken from the distinctive character or the repute of that mark, by limiting the space for fair use and by forbidding expressions such as “kind”, “type”, “flavor”, “style”, “imitation” attached to the products that are not certified. Unlike other previous works that discuss whether to protect the GIs via sui generis or trademark law, this paper focuses on the current protection scheme and proposes revisions to provide more thorough protection. Moreover, the paper also examines several landmark cases in Taiwan and offers a new perspective about incorporation precious cultural heritage into the trademark system.