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Trademark Opposition or Invalidation based on Prior Use can be filed only if the based Trademark has not been registered in Taiwan
The three most commonly cited provisions in Article 30, Paragraph 1 of the Trademark Act of Taiwan that prohibit the registration of trademarks are as follows:
a. Prior registration or application: A trademark that is identical or similar to another person’s registered trademark or earlier filed trademark for the same or similar goods or services, and is likely to cause confusion among relevant consumers.
b. Famous trademark: A trademark that is identical or similar to another well-known trademark or logo, and is likely to cause confusion among the public or diminish the distinctiveness or reputation of the well-known trademark or logo.
c. Prior use: A trademark that is identical or similar to another trademark that has been used earlier for the same or similar goods or services, and the applicant is aware of the existence of the other trademark due to contractual, geographical, business, or other relationships, and intends to imitate it and apply for registration.
If a trademark cited as the basis for filing a trademark opposition or invalidation has been used domestically and internationally, and has also been registered in Taiwan, the issues of whether the aforementioned provisions can be claimed at the same time and the sequence in which these provisions are applied are important in trademark dispute cases.
The Supreme Administrative Court expressed in a judgment on a trademark opposition case in 2023 that the Trademark Act of Taiwan adopts a registration doctrine rather than a usage doctrine. In principle, a trademark that is used but not registered in Taiwan will not be protected. However, because the use of a trademark is the value of the trademark, in order to avoid excessive rigidity and disadvantages, the provisions of the Trademark Act governing prior use of a trademark provides protection for trademarks that have not been registered in Taiwan but have been used domestically and abroad. This is an exception to the trademark registration doctrine and territorial doctrine. Accordingly, if the first-used trademark has been registered in Taiwan and then has not been preemptively registered, the provisions of the Trademark Act governing prior use of a trademark should not apply.