Introduction
Article 63-І-2 of the Trademark Act stipulates that “the Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee.” Therefore, if a registered trademark, without any proper cause, has not been put to use or has been ceased use for three years, the trademark will be vulnerable to revocation. Since Taiwan adopts a “first-to-file” trademark registration system, prior use of a trademark is not a prerequisite for filing a trademark application. Nevertheless, it is obligatory for a trademark proprietor to constantly use a trademark after its registration in accordance with the law, not only to perform the trademark function, but further to prevent an unreasonable situation in which a trademark not used in the marketplace still precludes others from registering their trademarks. Said situation goes against the legislative purpose of the Trademark Act, which is to maintain fair competition and promote development of industry and commerce[1]. This article briefly introduces the concept of use of a registered mark in Taiwan and discusses a trademark case which has been selected by the Taiwan Intellectual Property Office (hereinafter “the TIPO”) as a benchmark case in recent years. The case details the process of determining if a mark has been put to genuine use in connection with the designated goods and sets forth relevant criteria for trademark revocation proceedings on grounds of non-use.
Use of a mark[2]
Definition and modalities of trademark use are set out in Article 5 of the Trademark Act, and include applying a trademark to goods, articles in connection with the provision of services, or commercial documents or advertisements relating to goods or services, etc.[3] Generally, a registered mark should be used by the trademark proprietor or by an entity consented by the trademark proprietor, and the mark shall be used in its entirety as originally registered, which means the identity of the trademark in use shall remain unchanged. The term “identity” means that although a registered trademark and the trademark actually used may be slightly different in form, the predominant and recognizable feature of the registered trademark shall not be substantially altered; consumers would thus perceive the trademark in use and the registered mark to be one and the same on the basis of general consensus in society. In addition, considering the territorial nature of trademark registration, use of the trademark should occur in Taiwan and relevant promotional activities should target and be known to local consumers.
In addition to Article 63-І-2 as mentioned above, Article 63-ІV of the Trademark Act prescribes that “where grounds for revocation exist in respect of some of the designated goods or services of the registered trademark, the registration may be revoked in respect of those goods or services.” That is to say, registration of a mark can be partially revoked, and only the registration of the goods/services on which the trademark proprietor has proven genuine use of the mark may be retained. Therefore, particular attention should be given to ensure that the goods or services on which a mark is actually used are consistent with the goods or services designated under the registration.
When determining whether the goods or services in use are consistent with the registered scope, it is accepted that the goods or services which are “equivalent or identical in essence” to those in actual use can be also deemed in use, which moderately relaxes the burden borne by the proprietor to prove genuine use of a mark on each good/service designated. The criteria for such determination should be based on whether the goods or services for which a mark is registered and those actually used are identical or equivalent in terms of nature, purpose and function, and whether the general public can identify them as being the same on the basis of commercial practices. Apart from the discussion in a legal symposium held by the Judicial Yuan (the highest judicial body in Taiwan), how the criteria are applied is further explored in a prominent case — the Administrative Judgement of the Intellectual Property Court[4] (hereinafter “the IPC”), 2019 Xing Shang Geng (Yi) Zi No. 5.
Classification of goods/services
Before heading to the case introduction, it is noteworthy that despite adopting the Nice Classification system for classifying goods and services, the TIPO further divides goods and services into 4-digit or 6-digit subcategories, with each subcategory covering goods/services of the same nature or features. The TIPO also published “reference materials pertaining to classification of good/services and cross reference,” which lists goods and services under each 4-digit or 6-digit subcategory as well as provides related notes and remarks. Such classification furnishes an important guideline to initially decide if goods or services are similar in order to define the protection scope in case of trademark infringement, and also serves as a reference when judging whether goods or services are “equivalent or identical in essence” in a non-use revocation. Classification of goods or services is instituted for convenience of administrative management and cross reference, but whether goods or services are actually similar or identical in essence is by no means determined solely based on such classification.
Legal Symposium held by the Judicial Yuan[5]
In 2019, the Judicial Yuan held a legal symposium focusing on Intellectual Property to discuss some legal issues in administrative litigations; one of the issues concerned the trademark non-use revocation as set out in Article 63-І-2 of the Trademark Act — if a trademark has been put to use, is it limited to the designated goods/services in the same class? The opinion that use of a mark should be limited to goods/services which are “identical with the designated goods/services in essence” was supported by most participants and prevails for the following reasons:
(1) First, the purpose of Article 63-І-2 of the Trademark Act is to urge the trademark proprietor to constantly and legally use its registered trademark on the designated goods/services after the mark is registered, whereby the Article imposes an obligation on the trademark proprietor to use its mark. Accordingly, if a mark is designated for use on more than one good/service, the trademark proprietor should adduce evidence of use item by item; evidence which is not in connection with use of the designated goods/services will not be admitted. However, to prevent such requirement from being too harsh, use of the designated goods/services can be established, although no evidence of use is submitted, if such goods/services are “identical in essence” with the designated goods/services based on which the genuine use is proved. Whether goods/services are “identical in essence” may be determined with reference to the 6-digit subcategories of the classifying system adopted by the TIPO (or 4-digit subcategories when 6-digit subcategories are not available). Generally, all the descriptions of goods/services under the same 6-digit subcategory are deemed identical in essence. However, in the situation where such criterion is not so suitable, further comprehensive consideration with regard to purpose, function, materials, manufacturing process, or contents of business as well as providers, etc. of the goods/services shall apply.
(2) In addition, the concept of similar goods/services is for establishing the protection scope of a trademark so the trademark proprietor may exclude others from using an identical or similar mark on identical or similar goods/services to conserve its right and interests and avoid confusion in the marketplace.
(3) Lastly, judgement on goods/services being “identical in essence” is to ease the burden of proof on the proprietor, while judgement on “similarity of goods/services” is to define the protection scope, and the two concepts should not be confused. When determining if goods/services are “identical in essence,” it is not advisable to refer to the concept of “similarity of goods/services” to avoid over-expansion of the scope of goods/services in use and thus deviate from the purpose of Article 63-І-2 of the Trademark Act, i.e., to prompt the proprietor of a trademark to proactively use the mark on the designated goods/services.
Administrative Judgement of the Intellectual Property Court, 2019 Xing Shang Geng (Yi) Zi No. 5
Background
In this case, the Intervener lodged a non-use revocation against Reg. No. 00650036 “
The issue in this case is “whether the Plaintiff (the trademark proprietor) had used the mark in dispute on the designated goods ‘crystallized fruits; candies; biscuits; dry snack; bread’ within three years prior to the filing date of the revocation.”
Reasoning and Holding
The IPC referred to the conclusion indicated in the above-mentioned legal symposium and commented that the legislative purpose of Article 63-І-2 of the Trademark Act is to urge trademark proprietors to proactively use their trademarks so as to comply with the function of a trademark to indicate the source of goods or services and maintain the trademark rights. If the trademark proprietor has already submitted evidence of use regarding some of the designated goods or services, the mark can also be deemed to have been used on other goods or services which are identical in essence, notwithstanding no evidential martials having been adduced. Whether goods/services are “identical in essence” may be determined with reference to the 6-digit subcategories (or 4-digit subcategories when 6-digit subcategories are not available) published by the TIPO. In general, all the descriptions of goods/services under the same 6-digit subcategory are deemed identical in essence. Nonetheless, when such determination is improper in a case, purpose, function, materials, manufacturing process, or contents of business as well as providers, etc. of the goods/services can be further taken into consideration, whereby if any of the goods or services are found to be of different natures, the registration thereof can still be revoked due to non-use. Furthermore, determination of whether the goods actually used are consistent with the designated goods should be based on purposes, functions and consensus in the marketplace. If two commodities have a relationship of subordination, inclusion, overlap or equivalence, the commodity on which the trademark is actually used can also be considered consistent with the commodity that is designated for use.
The designated goods “cakes” and “biscuits; dry snack; bread” are all classified in subcategory 300602, are all made from flour (rice flour) and provided by bakeries or pastry shops, and are very similar in their manufacturing process. Besides, from the aspect of commercial trading custom, sales channels of “cakes; biscuits; dry snack; bread” are identical or overlap; such goods can be produced by the same undertakings at any time with existing materials for sale to relevant consumers, and they can fulfill the same needs of purchasing customers. According to general social norms and trading situations in the marketplace, these products are identical in essence.
However, “crystallized fruits” and “candies” are respectively classified in subcategories 290802 and 300601, both of which belong to different groups from subcategory 300602 where “cakes” is classified. In addition, “crystallized fruits” are made with plums, peaches, apricots, pears, jujubes, white gourds, ginger or nuts as ingredients, namely dehydrated or candied fruits or vegetables that have been candied and processed with sugar or honey; while “candies,” of which the main ingredient is sugar, are made through the process of melting and boiling at a high temperature. Comparing “crystallized fruits” and “candies” with “cakes,” the materials, manufacturing processes or patterns of business and providers thereof are all different, and thus they should not be regarded as goods of the same nature.
Accordingly, the IPC held that since the mark in dispute had been put to use on “cakes” within three years prior to the filing date of the revocation, with regard to the designated goods “biscuits; dry snack; bread,” which are identical with cakes in essence, the mark in dispute should also be deemed as having been put to use on these goods, yet such application does not extend to the goods “crystallized fruits; candies.” Therefore, the designated goods “biscuits; dry snack; bread” are not subject to revocation due to non-use, while the designated goods “crystallized fruits; candies” had not been proved in use and the registration thereof should be revoked.
Conclusion
To sum up, it is important to use a trademark after its registration in accordance with the law in Taiwan, or the trademark proprietor may face the risk of the registration of its mark being revoked due to non-use. Firstly, a registered trademark shall be used in its entirety as originally registered. Any changes causing consumers to be unable to identify the altered form as the registered trademark may cause the registered trademark to be considered as not being in use. Hence, it is imperative to always ensure that a trademark is used in its originally registered form. Secondly, the main issue of a non-use revocation is whether a trademark has been put to use, which is a matter of fact. Therefore, to ensure a successful defense in non-use revocation proceedings, regularly collecting and retaining evidential materials is recommended; common evidence of use could be invoices, catalogues, packaging, shipping documents, advertising documents, etc., all of which should include a representation of the trademark and date of use, or should be supplemented by any materials that may be used to identify the trademark as used and the date of use. If a non-use revocation is initiated, to maintain the whole trademark registration, citing evidence of use regarding each of the designated goods or services is recommended. If this approach is not viable, the trademark proprietor is suggested to focus on linking the goods or services on which the mark has been used with the remaining designated goods or services of which evidence of use is not available, and trying to establish an equivalence with relevant supportive martials and argue that these goods or services should be deemed identical in essence in terms of nature, purpose and function in an attempt to prevent the protection scope of the trademark right from being diminished following revocation of the registration on the goods or services which are not deemed in use. Finally, if a trademark is to be replaced with a new trademark, and/or in the situation where the range of products or services has changed or expanded, the trademark proprietor is suggested to register a new trademark to ensure comprehensive protection in Taiwan.
*Section Chief of Trademark Division at Tai E International Patent & Law Office
[1] Article 1 of the Trademark Act reads, “This Act is enacted for protection of the rights of trademark, certification mark, collective membership mark, collective trademark and the interests of consumers, maintenance of fair competition, and promotion of development of the industry and commerce.”
[2] “Notice on the Use of Registered Trademarks” published by the Taiwan Intellectual Property Office.
[3] Article 5 of the Trademark Act reads, “‘Use of a trademark’ means any of the following acts, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark: (1) to apply a trademark to goods or packaging or containers thereof; (2) to possess, display, sell, export, or import the goods referred to in the preceding subparagraph; (3) to apply a trademark to articles relating to the provision of services; or (4) to apply a trademark to commercial documents or advertisements relating to goods or services. The preceding paragraph shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media.”
[4] The Intellectual Property Court was renamed “Intellectual Property and Commercial Court” on July 1, 2021.
[5] Proposal and Discussion Result No. 3, “Intellectual Property Legal Symposium” regarding “Administrative Litigation Related Issues,” Judicial Yuan, 2019.
[6] Judgement of the Supreme Administrative Court, 2019 Pan Zi No. 133.
