Under current practices in Taiwan, a trademark owner is not required to prove its use unless a non-use revocation is filed against his trademark. According to the Trademark Act, a trademark registration is vulnerable to a non-use revocation if it has not been put to use or has been suspended from use over three consecutive years after registration.(1) Once a non-use revocation is filed, the owner of the subject trademark will be notified and requested to prove its use of the mark in Taiwan within the past three years before the non-use revocation is filed. If no response or acceptable use evidence is filed, the subject mark will be revoked. Furthermore, the acceptable use requires the use of the mark on the goods/services or articles relating to the sale or advertising thereof with the intention of marketing, and the use should conform to the general practice of the trade.(2)
In a case appealed to the Intellectual Property Court (the IPC), a trademark owner, which is a company based outside of Taiwan, submits use of mark through a licensee in Taiwan. The submitted evidence of use includes invoices, a price list, and a catalogue, all of the aforesaid being issued by the licensee, as well as product packaging. The price list and catalogue were not considered since they are not dated and unable to prove the use within the past three years before the non-use revocation was filed. The product packaging along with the invoices were accepted as the evidence of use.
One main argument presented by the revocation applicant is that the owner submitted no purchase order, shipping documents, or invoices to prove that the alleged licensee indeed received goods from the owner and sold the same goods as the owner's licensee in Taiwan. Furthermore, the alleged licensee sent individuals to carry the goods within personal luggage is not conforming to the general practice of the trade. Regarding this argument, the IPC held that the designated goods cosmetics are easy to carry, it is common that businesses ship the goods to Taiwan for sale through passenger luggage or mail delivery of small parcels. Such use is still conforming to the general practice of the trade. Moreover, under such circumstances, it is justifiable that the owner cannot provide shipping documents or relevant business correspondences. The IPC's opinion and reasoning were sustained by the Supreme Administrative Court. (3)
It is noted from this case that the courts become aware of and accept modern transactions. Despite traditional cargo shipment through customs, many small businesses today may arrange individuals to pick up the goods, carry them with personal luggage back to Taiwan and distribute them to consumers in Taiwan. Such use of a registered trademark is sill conforming to the general practice of trademark. A trademark owner may successfully defend his trademark registration with product packaging and relevant invoices relating to sale of the goods to consumers in Taiwan.
In addition, according to new Trademark Act, in addition to defend the trademark registration in a non-use revocation, a trademark owner, who intends to file an invalidation or revocation by citing his own trademark registrations that have been registered for over three years, is also required to present its own use evidence. (4)
Footnote:
(1).Article 57-I-2 of the old Trademark Act provides that in the case where any of the following conditions occurs after the registration of a trademark, the Registrar Office shall, ex officio or upon an application, revoke the said registration: Where, without valid reasons, a trademark has not yet been put into use or has been suspended from use continuously for three years after registration. However, the aforementioned shall not apply to one that is in use by a licensee.
After the new Trademark Act became effective on July 1, 2012, the provision has been adjusted to Article 63-I-2 of the new Trademark Act, which 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.
(2).Articles 6 and 59-III of the old Trademark Act respectively provide that fact proving the use of a trademark presented by the trademark right holder set forth under the preceding paragraph shall comply with the general practice of trade.
The term, use of trademark, as referred to in this Act connotes the utilization for marketing purpose of trademark on goods, services or relevant articles thereof, or the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark.
After the new Trademark Act became effective on July 1, 2012, relevant provisions are respectively stipulated under Articles 5, 57-III and 67-III of the new Trademark Act,
“Use of a trademark” means any of the following act, 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.
The proof of use furnished pursuant to the preceding paragraph shall be capable of establishing the genuine use of the trademark in accordance with general commercial practices.
Article 57-III shall apply mutatis mutandis to the circumstance that a proprietor of a revoked trademark furnishes proof of use pursuant to Article 65-II.
(3).Judgment 98 Nien Du Xin Shan Su Zi No. 154 made by the Intellectual Property Court and Judgment 100 Nien Du Pan Zi No. 191 made by the Supreme Administrative Court.
(4).Articles 57-II, 63-I-1 and 67-II of the new Trademark Act respectively provide that an applicant who file an invalidation with the Registrar Office against a trademark registration on the grounds that such registration falls under Article 30-I-1 shall furnish proof that, during the period of three years preceding the date of the application for invalidation, the earlier trademark has been used in connection with the goods or services in respect of which it is registered and which he/she cites as justification for his/her application, or that there are proper reasons for non-use, provided the earlier trademark has at that date been registered for not less than three years.
The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark where the trademark is altered by the proprietor in different forms in which it was registered or supplemented with additional notes whereby the trademark is identical with or similar to another person’s registered trademark in relation to goods or services which are identical with or similar to those for which another person’s registered trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.
