22 Sep 2014 | ,

Where a trademark as registered consists of a combination of a word and a device, whether it will be deemed sufficient use when the word is placed at a corner of one surface of a product package and the device is placed at the diagonal corner on the same surface?

In principle, a registered trademark should always be used in its entirety as it was originally registered. However, use of a registered trademark in practice in a form which differs from the form in which it was registered, but does not affect the identity of the trademark according to general concepts prevailing in the society, […]

In principle, a registered trademark should always be used in its entirety as it was originally registered. However, use of a registered trademark in practice in a form which differs from the form in which it was registered, but does not affect the identity of the trademark according to general concepts prevailing in the society, shall be deemed to use the registered trademark. (Article 64 of the Trademark Act) The term “identity” means that the main features used to identify a trademark are not substantially changed even though there are minor differences in form between the trademark actually used and the trademark registered, so the two leave the same impression on general consumers and are perceived to be the same.

In practice, there have been several cases decided by the IP Court deeming that the registered trademarks can be considered to be in use where the main portions of a composite mark are used at the same time but separately, either where one on the top of a catalogue and the other on the bottom thereof, or where one at the front side of a product package while the other on the lateral side thereof.

However, it is the comprehensive consideration of the many factors in those cases, such as the format of catalog, the style of packaging, the impression left by the trademarks, the way how a trademark is displayed in the same industry, the general practice of trade and the perception of relevant consumers, etc. Thus, it may not be deemed sufficient use of a trademark in different industries and conditions, so we recommend a registered trademark always be used in its entirety.

Source: Q&A about trademark matters in the most recent forum collated by the TIPO and published on August 12, 2014
(http://www.tipo.gov.tw/ct.asp?xItem=527690&ctNode=7127&mp=1)

 

Delivered by: Sandy WANG (Ms.) / Senior Partner

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