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Can the Administrative Court Render an Administrative Judgment Demanding That the Intellectual Property Office Ex Officio Revoke Trademarks?
Article 63, Paragraph 1 of the Trademark Act stipulates that the Intellectual Property Office ("IPO") shall, ex officio or upon application, revoke the registration of a trademark if such trademark meets any of the conditions provided in Subparagraphs 1 to 5. That is to say, the IPO may take the initiative to revoke a registered trademark if it finds that a condition for revocation exists, even though there is no third party petitioning for revocation. However, if a third party files a petition for revocation based on one specific condition, but the IPO holds that the concerned trademark does not meet said condition and hence rejects the petition, can the revocation petitioner request that the administrative court order the IPO to revoke the trademark registration based on another condition in later administrative litigation proceedings?
The Intellectual Property Court adopted a negative view on this matter in its 2016Hsing Shang Su Zi No. 34 judgment rendered on December 9, 2016. In the judgment, the court stated that based on the principle of separation of powers under the constitutional order, even if the court considers that another condition for revocation may exist for the concerned trademark, the court cannot overrule the IPO's original decision which rejected the revocation petition, because such condition has never been reviewed by the IPO or raised by the revocation petitioner in the previous revocation proceeding.
The Supreme Administrative Court's 2018 Pan Zi No. 518 judgment (dated September 6, 2018) supported the aforementioned judgment of the Intellectual Property Court. It emphasized in the judgment: "Although Article 63, Paragraph 1 of the Trademark Act stipulates that the IPO can 'ex officio' revoke a trademark, since this authority rests with the IPO, the applicant has no right to file administrative litigation to request the administrative court to render a judgment ordering the IPO to revoke a certain trademark based on another condition for revocation."