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Prior Trademark Use in Foreign Country outside of Taiwan Accepted as Basis against Misappropriating Trademark Registration



According to the Trademark Act of Taiwan, a trademark may be protected in Taiwan basically only if the trademark is granted registrations in Taiwan for use on designated goods or services.
 
Nonetheless, in order to deter unfair competition of misappropriation of other's earlier used trademark, the Trademark Act also protects unregistered prior trademark use in certain circumstances.
 
According to the Trademark Act, the application for registration any trademark, which is identical with or similar to another person's earlier used trademark and to be applied for goods or services identical with or similar to those of the earlier used trademark, should not be granted where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark.
 
Nonetheless, one of the controversial issues is whether the protected prior use should be limited to the territory of Taiwan or also including the use in foreign countries or areas outside of Taiwan. Strictly legal speaking, since the jurisdiction of the Trademark Act may just cover the areas of Taiwan, the prior use of a trademark appears to be limited to the territory of Taiwan.
 
In support with the opinions of the Intellectual Property Court, the Supreme Administrative Court held in the trademark invalidation appeal case in 2014 against the judgment of the IP Court that the trademark earlier used either within the territory of Taiwan or outside of Taiwan may both be cited as the basis against the trademark registration in bad faith. The IP Court later takes the same opinions in other similar cases.
 
The IP Court further held in these cases that the prior use could be just the use earlier than the disputed trademark. It is not necessary to prove that the prior used trademark is created and is a pioneer around the world.
 
The Supreme Administrative Court and the IP Court had set a guideline for reviewing the issues of the prior use of the trademarks for future similar cases.

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