According to a judgment in the Intellectual Property Court (99 Hsing Shang Zu Tzu 111 Judgement), the trademark registration was cancelled because of failure to prove its use in Taiwan within the three years prior to a revocation action being raised.

The trademark owner, Chrome Hearts Japan, Ltd., obtained the trademark right of “CHROME HEARTS plus the Scroll Design” through assignment from Chrome Hearts, Inc. (a U.S. corporation). The recordation of assignment was made on March 23, 2004 and published in the June 1, 2004 issue of the Trademark Gazette. On March 2, 2007, a third party raised a revocation action against said registration, of which the expiry date is February 28, 2011.

Though the trademark proprietor submitted some documents and/or material to prove use of said mark in Taiwan, the Intellectual Property Office (TIPO) did not accept them as proof of use and decided that the subject mark should be revoked. Said decision was upheld by the Ministry of Economic Affairs (MOEA, the authority of Appeal) and the Intellectual Property Court (IP Court) even though the registrant submitted further proof in the Appeal and the Administrative Suit.

Article 57-I-2 of the Trademark Act (now Article 63-I-2 of the Trademark Act effective July 1, 2012) provides that “where, without good cause, a trademark has not yet been put into use or has been suspended from use continuously for three years after registration, the Registrar Office shall, ex officio or upon request, revoke the said registration. However, the aforementioned shall not apply to one that is in use by a licensee.” “In a revocation action, the trademark proprietor shall prove with facts of use thereof.” (Art. 59-II of previous Trademark Act, Art. 65-II of the current Act) Moreover, “the fact proving the use of a trademark presented by the trademark proprietor shall comply with the general practice of trade.” (Art. 59-III of previous Trademark Act, Art. 65-III of the current Act) “Where the trademark in actual use differs from the registered one yet commonly recognized in society to have preserved the sameness, such use shall be deemed use of the registered mark.” (Art. 58-1 of previous Trademark Act, Art. 64 of the current Act)

In the subject case, the plaintiff, Chrome Hearts Japan, Ltd., submitted some documents and materials to prove use of the captioned trademark “CHROME HEARTS plus the Scroll Design” on glasses, sun-glasses, cases of glasses, cases of sun-glasses, etc. in Taiwan. However, based on the aforementioned regulations, none of them was accepted as valid proof of use. Among them, we cite the following examples for your reference:

1. The plaintiff’s advertisements in 2005 and 2006 did not show that the subject mark had been used on the designated goods nor was the subject mark shown in the advertisements.
2. Information regarding the opening of the Taipei branch of the CHROME HEARTS store in July 2007 is not accepted because such information was dated posterior to the date of revocation action was filed, i.e. March 2, 2007.
3. Advertisements dated July and August 2007 were later than the filing date of the revocation action.
4. Without indicating the date, the subject mark and its designated goods, the packing, stationery and brochures cannot be accepted as evidence of use.
5. Some documents showing sales from shops in Las Vegas in the U.S.A. to Taiwan between 2004 and 2006 cannot be accepted, though said documents contained various products including glasses, because such information does not prove the fact that the glasses were manufactured by the plaintiff. Furthermore, there is no indication of the subject mark in the glasses or the brochures submitted on record.
6. From the plaintiff’s global website, the locations where “CHROME HEARTS” products are available can be seen. However, said material did not refer to the subject mark or glasses.
7. The separate notarized Declaration prepared by an officer of the plaintiff or its Hong Kong agent is not sufficient to prove actual use if without use material.
8. Although some glasses frames do show “CHROME HEARTS” written in a stylized form, as it is not the same as the mark registered, such cannot prove use of the subject mark.

From the mentioned decision, we recommend that a trademark proprietor implement actual use of its mark in Taiwan according to the relevant regulations of the Trademark Law to maintain validity of a registered mark. In a revocation action, evidence of nominal use is not sufficient. Please make sure to use the mark as it is registered and not alter the identity of the mark registered.