Newsletter
Trademark Revocation due to Improper Use by Licensee
If the proprietor of the trademark modifies the word(s), device, or color of a registered trademark or adds other words, devices, or colors thereto, and such modification or addition renders the trademark identical or similar to another's registered trademark which is used on the same or similar goods or services, resulting in a likelihood of confusion on relevant consumers' part as to the source or manufacturer/provider of the goods/services, this constitutes the grounds for revocation under Subparagraph 1 of Paragraph 1 of Article 63 of the Trademark Act.
Paragraph 2 of Article 63 of The Trademark Act also stipulates that the registered trademark shall also be revoked in the case where the proprietor of such a trademark, who knowingly or with reasonable grounds to know, does not raise any objection to the conduct as prescribed in Subparagraph 1 of preceding paragraph by a licensee.
The key issue is how to determine the facts that the proprietor of the trademark knowingly or with reasonable grounds knows the situation of a licensee's improperly using the trademark. The Supreme Administrative Court held in 2016 that it is required to expound such facts.
The Supreme Administrative Court pointed out the facts that such improper use by the licensee for over five years or the licensee agreement had been renewed cannot be cited to conclude that the proprietor of the trademark definitely knowingly or with reasonable grounds knows the licensee's improperly using the trademark.
The Supreme Administrative Court then revoked the Intellectual Property Court's judgment of the original trial and requested the IP Court to review the facts again and to make a new judgment after further investigation and trial.