Newsletter
Risk of Trademark Revocation Due to Altered Use or Addition of Notes
I. Relevant provisions on revocation due to altered use or additional notes on trademarks
Subparagraph 1, Paragraph 1, Article 63 of the Trademark Act provides: "After trademark registration, if any of the following circumstances occurs, the Trademark Registrar Office shall, ex officio or upon application, revoke its registration: 1. Where the trademark is altered or additional notes are added, resulting in the registered trademark being identical or similar to another person's registered trademark used on identical or similar goods or services, thereby causing a likelihood of confusion among relevant consumers." The legislative purpose of the aforementioned provision is to impose an obligation on the trademark owner to use the post-registration trademark lawfully, so as to avoid improper use of the registered trademark that may cause conflict or confusion with other registered trademarks, thereby ensuring fair competition in the market.
Furthermore, according to Point 4.2 of the Notice on the Use of Registered Trademarks, "'altered use or addition of notes' refers to changes or additions to the text, graphics, colors, etc., of the registered trademark itself. In addition, since the legislative purpose of Subparagraph 1, Paragraph 1, Article 63 of the Trademark Act differs from the determination of genuine use of the trademark, whether the use of the trademark is identical to the registered device should not be the criterion for determining whether there has been an alteration or addition of notes.
Moreover, according to Paragraph 2, Article 67, which applies mutatis mutandis Paragraphs 2 and 3, Article 57 of the Trademark Act, if the registration of the trademark cited for revocation has been in effect for more than three years, the applicant for revocation shall submit evidence of genuine use of the trademark cited for revocation within the three years prior to the filing date of the revocation application.
The Supreme
Administrative Court's Judgment 113-Shang-Zi No. 188 (dated February 11, 2026) found that the actual use of the
trademark by the trademark owner of the trademark at issue (the plaintiff) constituted alteration or addition of
notes, and thus the trademark registration should be revoked. The court upheld the original judgment of the
Intellectual Property and Commercial Court and dismissed the appeal filed by the trademark owner of the
trademark at issue (the plaintiff).
II. Facts of the case
The trademark
device of the trademark at issue is "NAVY," designated for use on clothing goods listed in Class 25.
The two trademark devices of the trademarks cited for revocation are "
" and "
", covering clothing goods listed in Class 25 and "retail and wholesale services of
clothing or clothing accessories" listed in Class 35, respectively.
The applicant
for revocation (the intervenor) discovered that the trademark at issue had been used in an altered form or with
additional notes. After notarizing the webpage of the trademark owner of the trademark at issue, the applicant
filed an application for trademark revocation with the Taiwan Intellectual Property Office (TIPO) pursuant to
Subparagraph 1, Paragraph 1, Article 63 of the Trademark Act. After TIPO rendered a decision to revoke the
trademark registration, the trademark owner of the trademark at issue filed an appeal with the Ministry of
Economic Affairs (MOEA); the appeal was still dismissed. Consequently, the trademark owner initiated this
administrative litigation.
III. The Court's Judgement
1. The court found that the evidence submitted by the applicant for revocation was sufficient to prove genuine use of the trademarks cited for revocation within the three years prior to the filing date of the revocation application
(1) The applicant for revocation submitted evidence such as order details, invoices, website screenshots or processing progress for sale of clothing, footwear, and socks. The order details showed the English words "OLD NAVY" in white positioned within a blue oval. The goods' brand name was "OLD NAVY," with the goods being priced in New Taiwan Dollars. The recipient's information in Taiwan was included.
(2) The screenshot of the applicant's official website located at "tw.oldnavy.gap.hk" displays the trademarks cited for revocation presented within the Chinese-language content.
2. The trademark owner of the trademark at issue had indeed altered the trademark or added notes to the trademark
(1) Decorative patterns are generally merely perceived as ornamentation of goods' appearance and, in principle, do not serve to indicate the source of goods or services. However, whether they constitute use of a trademark or are merely decorative depends on the labeling practices, methods, and positions used by peers in the relevant trade. Clothing enterprises usually affix their trademarks to the collars, pockets, sleeves, or the chest area of the apparels. Then, labeling the trademark device on the chest area of the apparels, according to industry practice, is generally recognized as trademark by relevant consumers, according to prevailing societal concept and understanding of relevant consumers as trademark use. Thus, the affixation of the trademark should constitute trademark use.
(2) The trademark at issue consists solely of the English word "NAVY." The trademark owner placed the word "NAVY" in white within a blue oval (hereinafter "the device at issue") and affixed the mark to the chest area. According to general social perception and the understanding of relevant consumers, this is sufficient for consumers to recognize it as a trademark, thus constituting use of a trademark. This is not limit to whether the device at issue and the trademark at issue possess identity.
3. The trademark owner's alteration or addition of notes to the trademark at issue is likely to cause a likelihood of confusion among relevant consumers
(1) Comparing the device at issue with the trademarks cited for revocation, both place the English words "OLD NAVY" and "NAVY" in white within a black oval background and blue oval background, respectively, and both contain the identical word "NAVY." Although "OLD" in "OLD NAVY" in the trademark cited for revocation is an adjective, the main distinctive part remains "NAVY." The oval backgrounds in the trademarks of both parties serve to highlight the text within. Accordingly, there is a significant degree of similarity between the two trademarks.
(2)
The trademarks cited for revocation cover
goods including clothing and footwear listed in Class 25 and services including services of "retail and
wholesale services of clothing or clothing accessories" listed in Class 35. Compared with the goods listed
in Class 25 and designated by the trademark at issue, both trademarks are all related to wearable goods for
humans. They have a complementary relationship, while the retail and wholesale services also cover such goods.
Thus, there is a significant degree of similarity between the related goods and services.
IV. Conclusion
In practice, the determination of whether a trademark constitutes alteration or addition of notes does not depend on whether the trademark in actual use is identical to the registered device. Rather, the assessment focuses on whether the actual use is likely to cause confusion with another registered trademark.
Given that trademark owners often adjust the actual use of their trademarks for business strategy reasons, they should refer to the Notice on the Use of Registered Trademarks published by TIPO, continue to use the trademarks lawfully, and examine whether the actual use is substantially identical to the registered representation, to avoid disputes over genuine use within the three years prior to the filing date of the revocation application. They should also be particularly mindful of whether their use constitutes alteration or addition of notes, so as to mitigate the risk of trademark revocation.
Our firm represented the applicant for revocation (the intervenor at the administrative litigation stage) in this case. We successfully assisted the client in obtaining a favorable revocation decision during the revocation proceedings and secured a favorable judgment during the litigation stage.