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Time to Determine Whether a Registered Trademark Has Become a Generic Term
In determining whether a registered trademark has become a generic term for the goods/services, the time of determination is critical. In the 2017 Taiwan Supreme Administration Court's Judgment No. Pan-Zi-656, it clearly points out that the time of the revocation facts shall be the time the revocation application is filed. As for the facts occurring after the date of filing the revocation action, no matter they are favorable or unfavorable to the trademark owner, they shall not be considered.
In the cited case, the Intervenor was granted by the Taiwan Intellectual Property Office (hereinafter the "IPO") to register the mark "蠍尾刷" under No. 1175440 in Class 10 (hereinafter the "disputed mark") on 1 October 2005. On 3 August 2011, the Appellant filed a revocation application with the IPO against the disputed mark, and the disputed mark was then revoked according to Articles 63-1(2) and 63-1(4) of the Taiwan Trademark Act. To seek a reverse result, the Intervenor filed an administrative appeal with the Ministry of Economic Affairs (hereinafter the "MOEA"). After examination, the MOEA ruled that the IPO's revocation decision on the disputed mark on "body massage brush" should be cancelled and the IPO should render a new decision thereon; however, the revocation decision on the rest of the goods designated for the disputed mark should be upheld.
The Appellant instituted an administrative suit, and the Intellectual Property Court (hereinafter the "IP Court") rendered a judgment unfavorable to the Appellant. The Appellant further instituted an appeal with the Taiwan Supreme Administrative Court (hereinafter the "Supreme Court") and the Supreme Court rendered a judgment favorable to the Appellant, which rescinded the original judgement and remanded the case to the IP Court for retrial. After re-examination, the IP Court maintained a judgment unfavorable to the Appellant. The Appellant again instituted an appeal with the Supreme Court, which was overruled as per its Judgment No. 106-Pan-Zi-656.
In the 2017 Taiwan Supreme Administration Court's Judgment No. Pan-Zi- 656, it points out as follows: According to Article 66 of the Taiwan Trademark Act, with respect to the grounds for a revocation against a registered trademark, the provisions in effect at the time of application for the revocation shall govern. Nevertheless, the provision only deals with the time of the applicable law. With regard to the time of the revocation facts, the law is not expressly provided.
In respect to a revocation action on the grounds that the trademark has become a generic term for the designated goods, along with the passage of time and development of litigation, more and more consumers and vendors will use the generic term (i.e. the trademark) as a product name. The longer the time of the revocation facts is deferred, the more obvious the generalization of the relevant mark is. The occurrence of which would be unfavorable to the trademark owner but favorable to the applicant of the revocation action.
On the other hand, when the trademark owner is aware that the revocation is filed based on the mark being generic, he/she would strengthen the use of the disputed mark and thus the disputed mark may be revival and re-obtain distinctiveness. Under the circumstances, the deferring of the time of the revocation facts will, instead, eliminate the fact that the disputed trademark has become a generic term. The occurrence of which is favorable to the trademark owner but unfavorable to the applicant of the revocation action.
In consequence, the deferring of the time of the revocation facts just increases the uncertainty of the claims and the procedure of giving proof and thus, results in the evidence presented during the revocation action in vain. From the perspectives of the procedural economic principles or the effectiveness of rights remedy and the balance of both parties' interests, the revocation shall be based on the facts when the revocation application is filed. As for the facts occurring after that specific date, no matter they are favorable or unfavorable to the trademark owner, they shall not be considered.