Taiwan Trademark Law has a post-registration opposition system, allowing any third party to file an opposition action against a registered trade mark during the three months after registration. Once the mark is revoked, the mark is deemed not to have been registered ab initio. Also according to the law, the Trademark Office may, ex officio or upon request, cancel a registered trade mark if the mark has not been put to use or its use has discontinued for three years without a justifiable reason.
Taiwan Tobacco & Liquor Corporation (TTLC) filed an application to register the trade mark Taiwan Green Beer in Chinese characters in Class 32 in respect of beer and the trade mark was registered on June 16 2006. During the three-month opposition period, Taiwan Tsing Beer Co (TTBC) filed an opposition action based upon its prior trade mark Taiwan Green Beer in Chinese characters in Class 32.
Three years after registration of the opposed mark, while the opposition case was still pending, TTBC also filed a cancellation action because the mark had not been put to use, as is required during that three-year span.
TTLC admitted that the mark has not been used but said this was because it faced the possibility of revocation and if the mark is revoked, it shall be deemed not to have been registered in the first place. Alleging that use of a possibly unregistered mark might expose it to the risk of infringement against the trade mark owned by TTBC, TTLC claimed it has "justifiable reason" to put the mark in an idle status.
The Intellectual Property Office, after examination, rendered a decision to cancel registration of the opposed mark, holding that the reason submitted by the registrant to justify non-use of the mark was groundless. Dissatisfied with the decision, TTLC appealed to the Board of Appeals and then to the IP Court.
After hearing the case from all aspects, the IP Court held that "justifiable reason", as specified in Article 57.1 of the Trademark Law, only refers to those factors or circumstances not attributable to the registrant, viewed objectively. In this case, TTLC's reason for non-use is simply based upon a subjective hypothetical presumption that use of its mark might face an infringement lawsuit, not based upon any material fact which may interfere with use of the mark. The reason put by TTLC is not an acceptable "justifiable reason".
The IP Court hence adhered to the decision by the Intellectual Property Office to cancel the registered mark. Thereafter, the IP Court's Ruling was rubber stamped by the Supreme Court in its ruling in June of 2011.
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Julia YM Hung |
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