In Taiwan, a registered trade mark is vulnerable to non-use cancellation if, without justifiable cause, use of the trade mark has not begun within three years of its registration or after a period of time, use of the trade mark has been discontinued for a period in excess of three years.
While the trade mark use referred to in the Trademark Act should be related to marketing and should conform to commercial transaction habits, in general, advertisements, sales or marketing materials may serve as proper evidence of use.
In a recent non-use cancellation action against a trade mark registered in respect of installation, repair and maintenance services in Taiwan, the trade mark owner submitted some use materials in defence of the validity of its trade mark registration, including flyers and commercial receipts. The Taiwan Intellectual Property Office then dismissed the non-use cancellation for the reason that the challenged trade mark was proved, through the evidence submitted, to have been put to proper use. However, when the case was appealed to the IP Court, the IP Court revoked the decision of the IPO.
The IP Court ruled that the materials lodged by the trade mark owner were not sufficient to attest to the actual use of the trade mark pending further verification of the authenticity of the lodged materials. In addition, since no official record showed the trade mark owner having paid any taxes or purchased any work insurance or health insurance for its employees during the three years before the filing of the non-use cancellation action, it is reasonable to conclude that the trade mark owner has not been doing any business, let alone providing installation, repair and maintenance services under the registered mark. As such, the evidence of use of the registered trade mark lodged could not be authentic.
The IP Court's decision reveals that when determining whether or not a registered trade mark has been put to proper use, the trade mark owner's business status could be crucial in the test of the authenticity of the evidence of use lodged.
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| Julia Y M Hung |
Saint Island International Patent & Law Offices
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