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It is Deemed Genuine Trademark Use if Part of the Actual Transaction Process of Hotel Services is Completed in Taiwan
A third party filed, on 20 April 2020, a non-use cancellation against the disputed mark "CROWN" Reg. No. 00104570 in respect of the service "hotel; restaurant; coffee shop; hot and cold beverage store; brasserie and bar services" in Class 43 claiming that the disputed mark has not been used or has been suspended from being used in Taiwan for three years after registration. Given this, the relevant period of three years referred to 20 April 2017 to 20 April 2020.
By Decision of Taiwan Intellectual Proper Office (IPO), the disputed mark registration in its entirety is revoked. The registrant/appellant, Crown Melbourne Limited (hereafter "Crown Melbourne"), then filed an administrative appeal with the Ministry of Economic Affairs (MOEA) contesting the IPO's decision. In the appeal decision, the MOEA held that the IPO's decision should be dismissed. The main grounds of the appeal decision is as follows:
1. Through cooperative relationship with a Taiwan travel agency, Crown Melbourne has been soliciting potential Taiwan customers to stay in its hotel in Australia and the Taiwan consumers can book with and pay to the Taiwan travel agency for the hotel reservation in Taiwan.
2. The evidence submitted shows that, between September 2017 and June 2018, Taiwan consumers booked the appellant's hotel services through "TripAdvisor" and "ezTravel" websites and left comments on said websites after stayed at the appellant's hotel in Australia.
It can be seen that the appellant has advertised, during the above period, its hotel and ancillary services in Australia to Taiwan consumers through Taiwan booking websites.
It can be seen that the appellant has advertised, during the above period, its hotel and ancillary services in Australia to Taiwan consumers through Taiwan booking websites.
3. Although the appellant does not operate hotel business and provide its hotel services in the territory of Taiwan, part of the actual transaction process of hotel services designated for the disputed trademark registration is completed within the territory of Taiwan via its cooperating with Taiwan travel agency and/or "TripAdvisor" and "ezTravel" websites which contributes to the creating of a market or adding of the market value of the trademark in Taiwan. Thus, the trademark use meet with the principle of territoriality and comply with use prerequisites stipulated in Taiwan Trademark Act.
4. In conclusion, the IPO's revocation decision shall be abolished.
The case is now in appeal procedure in the Intellectual Property and Commercial court.