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Intellectual Property Court Determines Use of Trademark Must Have Actual Trading in Taiwan
According to the Trademark Act, the Intellectual Property Office shall revoke the trademark registration at its discretion or upon an application by any third party once a registered trademark has not been used without justifiable reasons for continuous three years. Once a non-use revocation is filed, the trademark registrant will have to prove the fact that the trademark has been used within 3 years prior to the date of application for revocation. The key issues of the non-use revocation include how to determine whether the trademark is used or not and whether the trademark use should have any actual trading in Taiwan.
The Intellectual Property Court held in a non-use revocation case in 2021 that if the trademark is just advertised in Taiwan, but the trademark registrant does not have a department store in Taiwan, nor does any actual transaction behavior of department store services Taiwan, such situations does not meet the definition of the true use of a trademark as stipulated in the Trademark Act.
The IP Court exemplified that, for example, a catering company filed and was granted a trademark registration for use on catering relevant services, and then used the trademark on menus, price lists, business cards and other related documents in Taiwan or published advertisements on TVs and newsprints to promote the catering services it provided. If it does not open any restaurant in Taiwan, but promotes its restaurant services abroad, such situations do not generate any economically valuable market related to catering services in Taiwan. It will be difficult to support that it is in line with a trademark use in Taiwan according to the Trademark Act.
The IP Court further specifically determined in this case that the information disclosed by the trademark registrant clearly shows the use of the registered trademark on relevant advertisement for the department store, but the trademark registrant did not actually operate a department store in Taiwan. The discount coupons or leaflets issued by the trademark registrant at the travel exhibition are just for advertising activities. The consumers in Taiwan must use such coupons in the department store where the trademark registrant is located in Japan. The entire transaction of the service took place in Japan, and the economic activities of department store services did not occur in Taiwan. Such situations did not comply with the true use of the trademark. It cannot be determined that the trademark registrant has used the disputed trademark in the designated service for the department store in accordance with the Trademark Act.