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If Registrant had Knowledge of Potential Petition of Non-Use Revocation, Evidence of Use in Three Months before Petition Will Not be Considered as Valid Evidence
Taiwan adopts a "first-to-file" trademark registration system. With the consideration that the main purpose of trademarks should be built through actual use, the trademark registrant has the obligation to use the registered trademarks under the Article 63 of the Trademark Act. Non-use of a registered trademark for consecutive three years will be vulnerable to revocation of the registration.
When the petitioner of the non-use revocation is investigating of the use status of a trademark registration, such investigation might alert the registrant, which might prompt the registrant to produce evidence of use in anticipation of the potential non-use revocation action. Therefore, under Article 63-3 of Trademark Act, revocation of the registration shall not be granted if the registered trademark is being used at the time the application for revocation is filed, unless the person began using the trademark within the three months before the revocation because of learning that another person was preparing to file petition of non-use revocation. In other words, if the registrant only starts to use the trademark in three months upon learning the potential non-use revocation, the registration should still be revoked. In a recent administrative litigation, the Intellectual Property Court demonstrated how this Article may be applied in practice.
In this case, the registrant held a trademark registration in Class 3 with the designated goods "cosmetics, permanent waving lotions, hair dyes, body cleanser". The plaintiff filed a non-use revocation petition against the registration with Taiwan Intellectual Property Office (TIPO). In the non-use revocation procedure, the registrant offered the evidence of use, such as delivery order or invoices. TIPO recognized that the mark was used based on the evidence offered by the registrant, therefore decided that the goods "cosmetics" should not be revoked. The plaintiff later appealed the case all the way to the Intellectual Property Court.
The Court first clarified that, if the registrant started to use the mark only in anticipation of the potential non-use revocation, such conduct should not be protected by the law. Further, the Court pointed out that the dates of the evidence of use offered by the registrant were around September 2016 to November 2016, which was three months before the plaintiff filed the petition of non-use revocation. Since the plaintiff has hired an investigator to investigate the use status of the registrant's mark during October 2016, the registrant must have learned the potential non-use revocation therefore started to produce the evidence of use. Therefore, in accordance of Article 63-3 of Trademark Act, the registration should be revoked.