Newsletter
Use of Trademark as Role Setting or Player Name Not Constitute Trademark Use
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 and Commercial Court held in a non-use revocation case in 2021 that use of a trademark as role setting or a player name does not constitute trademark use as defined under the Trademark Act.
The Intellectual Property and Commercial Court raised six factors in this case determining whether the use meets the requirements of the trademark use in accordance with the Trademark Act:
1. The subject intent of the trademark owner to use the trademark is for marketing purpose;
2. The trademark owner is objectively using the trademark for designed goods or services or related objects, or using flat images, digital audio and video, electronic media or other media, so enough to make relevant consumers recognize it as a trademark;
3. The trademark owner shall use the entire trademark without splitting any parts of the trademark;
4. The trademark shall not be altered by the proprietor in different forms in which it was registered or supplemented with additional notes whereby the trademark is identical with or similar to another person's registered trademark in relation to goods or services which are identical with or similar to those for which another person's registered trademark is designated, and hence there exists a likelihood of confusion on relevant consumers;
5. The trademark shall be used on the designed goods or services covered by the trademark registration; and
6. Use of the trademark has not been suspended for a continuous period of over three years.
The Intellectual Property and Commercial Court emphasized that relevant evidence can only prove that the trademark owner has use the words in the trademark as the host or performer of the series or album produced by the trademark owner. The words are displayed by adding a note next to the face of the participant, which is recognized by the relevant consumers. It is only a subtitle that introduces the name of the host or performer. Such a use refers to only a specific individual, object or role, and shall not deemed a sign as a trademark capable of being recognized by relevant consumers as an indication of the source of goods or services.