Newsletter
Trademark Use in Course of Trade Not Limited to Use in Commerce
According to Article 5 of the Trademark Act, "use of a trademark" means any of the following act, "in the course of trade", where such trademark is capable of being recognized by relevant consumers as a trademark:
1. to apply a trademark to goods or packaging or containers thereof;
2. to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
3. to apply a trademark to articles relating to the provision of services; or
4. to apply a trademark to commercial documents or advertisements relating to goods or services.
The controversial issue on the definition of "use of a trademark" is whether the defined "use in the course of trade" only means and is limited to "use in commerce". The Supreme Administrative Court held in a judgment in 2020 that the definition of use of a trademark as stipulated in the Trademark Act is not limited to profit-making commercial transactions.
The Supreme Administrative Court pointed out that regarding the use of trademarks defined in the Trademark Act, the provisions only stipulate that there should be "for marketing purposes", which should be defined as "in the course of trade" and is not limit to only "for profit-making business transactions". The Court further took some examples explaining that the use of trademarks, which are registered by non-profit organizations, such as Harvard University, National Taiwan University, Tzu Chi Foundation., etc., are clear examples. The non-profit organizations do not always use their registered trademarks for profit-making commercial transactions.