1. Introduction

Since the Taiwan Trademark Act adopts the first-to-register doctrine, a trademark will not be protected by law without registration. Therefore, trademark trolls may register others’ marks in an attempt to affect the order of business. In this regard, Paragraph 1, Article 30 of Taiwan Trademark Act stipulates that: “A trademark shall not be registered in any of the following: … (12) Being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.” The following is a judgment regarding how the aforementioned regulation is applied in practice, especially when a trademark registration was applied for in bad faith but the designated products are not the same as the products of the earlier used mark (2018 Shin Shang Su Zi No. 86 by the Intellectual Property Court).

2. Facts

The intervener is the registrant of the trademark “BIEKE 361° and device,” (the “Trademark”) designated for use in Class 9 products including “glasses, snow goggles, goggles, spectacle frames, pince-nez, sunglasses, nearsighted glasses, farsighted glasses, astigmatism glasses, non-slip pads for glasses, contact lenses, spectacle cases, spectacle bags, lenses, nose pads, reading glasses; anti-glare glasses, spectacle components and corrective lenses.” The plaintiff filed an opposition action against the aforementioned registration as it started to utilize the marks “361°” and “BIEKE and device” before the registration date of intervener’s trademark. On January 30, 2018, the defendant, i.e., the Taiwan Intellectual Property Office (TIPO), rendered a decision of “opposition objected,” and the plaintiff filed an administrative appeal but the appeal was rejected as well. Therefore, the plaintiff filed an administrative litigation with the Intellectual Property Court.

3. Issues

Whether the opposition shall be granted on the ground of refusal of registration clauses under Subparagraph 11 and 12, Paragraph 1, Article 30 of the Trademark Act (referred to as the “well-known trademark protection clause” and the “trademark troll prevention clause”).

4. Summary of the judgments

(1) Main text:

a.The decisions of the opposition action and the administrative appeal shall be dismissed. The defendant, i.e., the TIPO, shall revoke the trademark registration “BIEKE 361° and device.”

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

(2)  The registration of the Trademark violates the trademark troll prevention clause.

a. The wordings “361°” and “BIEKE” contained in the Trademark are identical to the trademark of the plaintiff. If the marks of the intervener and the plaintiff are observed separately at different times and places, relevant consumers may misunderstand that both parties are related or they are sub-brands as the marks are almost identical. Therefore, the Court concluded that the trademarks are highly similar.

b. The plaintiff’s trademark has already been used in similar goods.

     (i) The plaintiff’s trademark has been used in China and has considerable popularity:

The General Administration of Quality Supervision, Inspection and Quarantine of China issued the China Famous Brand Product Certificate to the plaintiff’s “361°” trademark in September of 2005. On February 27, 2008, the plaintiff’s trademark also received a ruling Shang Ping Zi (2008) No. 00758 by the China Trademark Review and Adjudication Committee of the State Administration for Industry and Commerce which recognized the well-known status of the plaintiff’s mark since it has been widely advertised and used on sport shoes and related goods.

   (ii) The use and similarity of both trademarks may affect the definition of “similar goods” :

The “361°” mark was first used on sports shoes in China, and due to recent trends, sportswear, sport glasses and other accessories may be considered as related products by general consumers. For general consumers, it should be reasonably foreseeable that a well-known brand in sports shoes will further expand its business into clothing, glasses and other personal accessories. Therefore, the products “glasses; snow goggles; goggles; spectacle frames, anti-glare glasses; spectacle components; corrective lenses” designated by the Trademark and the sports shoes designated by the plaintiff’s “361°” trademark should be considered as similar goods.

c. The intervener intended to register the Trademark due to geographical proximity of Taiwan and China and the “361°” trademark being also well-known in China. In addition, the Trademark is almost identical with the plaintiff’s mark designated to be used on sports shoes. Therefore, the Court concluded that the intervener had knowledge of the plaintiff’s trademark and registered its Trademark in an intention of imitating the plaintiff’s trademark.

d. Since, the registration of the Trademark has met the three requirements of the trademark troll prevention clause, the opposition filed by the plaintiff should be granted, and the decision of both the administrative decision and administrative appeal should be dismissed and the TIPO shall cancel the registration of the Trademark.

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