The following trademark was opposed by a third party during its publication period in 2006 and the final official decision has not yet been issued until now.
During the opposition proceedings, the opponent further filed a Cancellation application against the above trademark by the ground of non-use for three years since its publication date according to the Trademark Act, Article 57.1(2) in 2009. The above trademark was successfully cancelled according to the official decision issued in 2010. The registrant filed an administrative relief against the TIPO’s decision by the reason that it is a “reasonable excuse” of non-use for the above trademark since it has been involving in pending opposition proceedings for years.
According to the Judgment of the Supreme Administrative Court for the above case (No.996 issued in 2011), the “reasonable excuse” refers to those situations which should not be imputed to the registrant, such as the stop of ocean shipping, the shortage of raw material or natural disasters which bring serious damage to the manufactory, so that the manufacture and
selling are stopped for a period of time, etc. Furthermore, the so-called “the situations which should not be imputed to the registrant” should be the situations which cannot be expected or avoided by the attention of general people according to objective standard, but not the situations subjectively interpreted by the registrant. Such interpretation was shown in the legal precedents early in 1966 and 2008 and also stated in the “Interpretation of the Trademark Act” in Taiwan.
Although the registrant argued that they could not invest and sell the products bearing the said trademark thoughtlessly before the final official decision of the opposition since it involved a very big amount of cost, the Judgment stated that there are several ways of using a trademark instead of manufacturing and selling the products only, for example, “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 (Trademark Act, Article 6)”. Therefore, it is not a “reasonable excuse” of non-use by the reason that a trademark has been involving in pending opposition proceedings for years.
In addition, the registrant argued that the opponent’s action of filing the Cancellation application during the opposition proceedings violated the principle of good faith. The Judgment stated that the Cancellation and Opposition systems belong to different public reviewing systems. Their requirements and purposes are different. Anyone can file an opposition application and also a cancellation application against the same trademark, if needed. So, the opponent did not violate the principle of good faith.
(Source: TIPO Newsletter issued on December 5, 2011)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5586)
