1. Introduction

If a trademark owner did not use his/her trademark after registration, such registration may be revoked by a third party. However, in the course of utilizing a trademark, the trademark owner should also maintain the distinctiveness of their trademark to prevent the mark from being revoked on the ground having become a generic mark or name of the designated goods or services. The following is an example of a typical administrative litigation involving the aforementioned situation (2022 Shin Shang Su Zi No. 2 by the Intellectual Property Court).

2. Facts

The intervener of this litigation is the registrant of the Taiwanese Trademark Registration No. 1227603 “TSA LOCK” (the “Trademark,” please refer to the picture below) since September 2, 2005, designated for use in products and services as listed in the Trademark Act Enforcement Rules, including Class 6 “metal locks for luggage;” Class 18 “backpack, rucksacks, sports carry bags, carry-on bags, travel bags, beach bags, briefcases, handbags, suitcases, suitcases, luggage, fanny packs and wallets;” Class 20 “non-metallic locks for luggage” and Class 22 “luggage straps.” The registrant also filed an extension of the trademark and the term has been extended to August 31, 2026. However, the plaintiff filed a revocation action against the Trademark on June 29, 2020 and the defendant, i.e., the Taiwan Intellectual Property Office (TIPO), rendered a decision Zhung Tai Fei Zi No. LO1070382 on June 29. 2020, which revoked the registration of the Trademark in classes 6 and 20 but maintained the registration in classes 18 and 22. The plaintiff then filed an administrative appeal with the Department of Economics against the decision of maintaining the registration in classes 18 and 22 but the appeal was dismissed by the decision Jing Su Zi No. 10906311180 on November 18, 2020. The plaintiff then filed an administrative litigation with the Taiwan Intellectual Property and Commercial Court (the “Court”). Since the Court considered the outcome of this litigation will affect the registrant’s rights pertaining to the Trademark, the Court requested the registrant of the Trademark to participate in this litigation as an intervener.

3. Issues

Whether the wording “TSA LOCK” of the Trademark has become a generic name of products of Class 18 and 22, so the provisions stipulated in Subparagraph 4, Paragraph1, Article 63 of the Trademark Act shall apply.

4. Summary of the judgments

(1) Main text:

a.The decision “rejection of revocation” of Class 18 and 22 of the Taiwanese Trademark Registration No. 1227603 “TSA LOCK” shall be dismissed.

b.The defendant should render an administrative decision to “revoke Class 18 and 22 of the Taiwanese Trademark Registration No. 1227603 TSA LOCK.”

c. The cost of litigation shall be borne by the defendant.

(2) The Trademark “TSA LOCK” is simply composed by two words “TSA” and “LOCK.” When considering whether the use of the Trademark in Classes 18 and 22 violates Subparagraph 4, Paragraph 1, Article 63 of the Trademark Act, the Court should consider all evidence provided by the plaintiff and intervener during the revocation and administrative appeal procedure and then decide if the Trademark has become a generic term in relation to suitcases, backpacks and luggage straps. The term “TSA LOCK” refers to a lock that can be opened by the U.S. Transportation Security Administration (“TSA”) and Customs by a master key. TSA lock has been widely used in luggage, backpacks, luggage straps and relating commodities in Taiwan and most customers would consider that the mark “TSA LOCK” refers to suitcases, backpacks and luggage straps equipped with a TSA lock and will not associate the Trademark with the intervener. Therefore, the Court opined that after the Trademark was approved for registration on September 1, 2006, due to the widespread use of the Trademark, it has become a generic term commonly used to represent suitcases, backpacks and luggage straps equipped with a TSA lock. Therefore, the Court rendered a judgment granting the plaintiff’s request to revoke the Trademark on products in Classes 18 and 22.

Reference: Anthology for the 70th Anniversary of Tai E's Law Practice