An individual filed the trademark at issue designating “watches” in Taiwan which was registered on January 01, 1961. After conducting renewal and assignment for several times, the current trademark owner is “FORMOSA WATCH CO., LTD.” (hereinafter “the intervening party”)
The Plaintiff requested to revoke the trademark at issue based on the reason that it had not yet been put to use or such use had been suspended for a continuous period of not less than three years without proper reasons for non-use according to Article 63 I (2) of Trademark Act.
The intervening party submitted copies of invoices where the trademark at issue was pasted along with model number of each product as evidence of use.
TIPO regarded that the invoices were sufficient evidence of use so dismissed the request for revocation because TIPO did not think the request of revocation was well grounded. The Plaintiff dissatisfied TIPO’s decision so filed an appeal and the administrative litigation.
IP Court’s viewpoint
Firstly, TIPO shall, ex officio or by request, revoke the registration if such 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 according to Article 63 I (2) of Trademark Act.
According to Article 5 of Trademark Act, “use of a trademark” means any of the following acts, in the course of trade, where it 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
In Taiwan, trademark registration is on a “first-to-file” basis, and actual use of the trademark is not a prerequisite for an application for registration of the trademark. However, the function of a trademark and the purpose of a trademark registration are not merely about acquiring trademark rights. Only through actual use of the trademark, consumers may come to associate the trademark with the goods or services. The more use of the trademark is made, the better function as a source indicator the trademark will have. Therefore, the trademark use is essential.
When determining whether it is the trademark owner’s genuine use of the trademark, objective criteria, such as if the trademark is used within the scope of the designated goods and services, should be complied with in addition to the general rules as stipulated in Article 5 of Trademark Act.
Thus, we can say that available trademark use shall conform to the following conditions:
(1) the user uses the trademark when engaging in commercial activities;
(2) the use of the trademark shall be one of the four acts of trademark use as stipulated in Article 5 of trademark;
(3) the trademark in use shall be capable of being recognized by relevant consumers as a trademark; and
(4) such use shall comply with general practice in the trade.
In conclusion, placing the trademark on commercial documents or advertisements relating to goods or services, such as order forms, catalogs, price lists, invoices, instructions, etc. enables consumers to recognize the trademark from those commercial documents so can be deemed sufficient use of the trademark.
Source: TIPO Newsletter
Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA1JAW-HWA INTERNATIONAL PATENT &
TRADEMARK & LAW OFFICES
10-1A Fl., No. 23, Sec. 1, Chang-An E. Rd.,
Taipei, Taiwan, R.O.C.
Tel.: +886 2 2531-0876 Ext. 172
Fax: +886 2 2581-2761
www.jaw-hwa.com.tw
wt.moc.awh-wajnull@awhwaj
