How does the IP Court identify evidence of trademark use in practice?

Trademark at issue: (Reg. No. 01033546)Trademark Owner: FORMOSA AUTOMOBILE CORPORATION

Designated goods: Automobiles; Vans; Jeep; Stage wagon; Bodies for vehicles; Rims for vehicle wheels; vehicle steering wheels; Transmission shaft; Driving motors for land vehicles; Windscreens; Car engine; Electric vehicles; Electricity-driven motorcycle; Vehicle transmission; Catalytic converters; Vehicle suspension device; Vehicle anti-lock braking system (ABS); Bicycles; Steamship; Aeroplanes.

A Chinese company, Beiqi Foton Motor Co., Ltd., filed a revocation against the trademark Reg. No. 01033546 (hereinafter “the trademark at issue”) based on the ground of non-use for three years up to Taiwan Intellectual Property Office (TIPO).

TIPO affirmed the revocation so that the said registration was cancelled.  However, after the trademark owner of the trademark at issue (hereinafter “the Plaintiff”) filed an administrative litigation up to the IP Court, the IP Court revoked TIPO’s decision.  From the decision made by the IP Court, we are able to know how the IP Court identifies evidence of trademark use in practice. The followings are main points where the IP Court holds different viewpoints from TIPO on this case.

1. Can it be regarded as the legitimate use of a trademark when the trademark at issue is adhered to products by adhesive labels? TIPO IP Court No, it can’t because adhesive labels may be adhered to the products any time. Yes, it can because: (1) The shock absorbers and transmission shafts are mental castings made of firm and solid material. Model numbers are hard to be imprinted thereon, so it’s feasible to adhere labels to the products. In addition, both the shock absorbers and transmission shafts are placed inside the body of cars, but not what consumers can see from the appearance of cars. Therefore, whether to imprint dates and model numbers on the shock absorbers and transmission shafts is the cost consideration which the manufacturers have to take into account. (2) The Plaintiff submitted the photos of the shock absorbers bearing the model number of “YAKZ000000000A”. From the copies of delivery lists, invoices and order forms submitted by the Plaintiff’s subsidiary company, those documents recorded the same model number “YAKZ000000000A” for a batch of vehicle parts, so they can mutually prove the correspondence among them. 2. Can the use of the trademark at issue on “wheel cover, shock absorbers, oil core, valve cover gasket, eccentric shaft seals, timing belt and assembly of rear shock absorbers” be regarded as the use of the trademark at issue on the designated goods? TIPO IP Court No, it can’t because those goods are not parts of the designated goods. Yes, it can. Those goods are general and essential components of vehicles so they fall in the scope of the designated goods of the trademark at issue. 3. Can the combination use of “ ” (the trademark at issue) and “FORMOSA” (another trademark owned by the Plaintiff) be regarded as the legitimate use of the trademark at issue? TIPO IP Court No, it can’t. The overall impression gives a combination trademark consisting of foreign languages and a device, which is different from the trademark at issue, a sole logo. There is no identity between the trademark at issue and the combination. Yes, it can. The word “FORMOSA” is the main portion of the Plaintiff’s company name. The purpose of using the word “FORMOSA” together with the trademark at issue is to strengthen the identification of the source of the goods, and enable related consumers or manufacturers to recognize the trademark at issue and the Plaintiff easier. Therefore, the combination use of “ ” and “FORMOSA” can connect related consumers with the trademark at issue so as to identify the source of goods.

Source: decisions made by MOEA (the superior institution of TIPO)

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