The Trademark Law of Taiwan stipulates that if a trademark actually used by the trademark owner differs from that as registered but without losing its identity according to the general social consensus, the registered trademark should be considered to have been used. To put it another way, although a trademark used may have a slight difference in form from a registered trademark, if it essentially does not change the distinctive character of the registered trademark, the identity of the two trademarks should be established.
Additionally, according to Article 3.2.1.1(3) of the Notice on the Use of Registered Trademarks published by the Taiwan Intellectual Property Office (the IP Office), by altering the non-dominant part of a trademark in use, it does not necessarily mean that the primary distinctive character of the trademark has changed.
The Taiwan IPC Court's initial judgment
A judgment rendered by Taiwan’s Intellectual Property and Commercial Court (the IPC Court) on December 29 2023 exemplifies how to tell a non-dominant part of a trademark from a distinguishing part of a registered trademark and to determine, in turn, that a trademark put to use and a registered trademark have identity.
In this administrative litigation, the plaintiff is the owner of the registered trademark shown in Figure 1, designated for use upon goods in classes 18, 25, 27, and 28. A third party initiated a cancellation action on the ground that the registered trademark had been put to non-use for three consecutive years.
The IP Office, upon examination, found that although the trademark owner had submitted evidence proving the ordering of training garments, sports bras, leggings, T-shirts, etc. by local consumers from the website of its distributor, as shown in figures 2 and 3, the shown trademarks are not the same as the registered trademark, which consists of the words "USA” and “PRO", combined with three coloured, vertical stripe designs. Specifically, the used trademarks omitted the eye-catching coloured stripes on the left side of the registered trademark, thereby changing the distinctive character of the latter.
This alteration suggests that the trademarks put to use do not have the same identity as the registered trademark. Therefore, with no physical evidence lodged proving use of the registered trademark in its original format, the registered trademark shall be cancelled.
Appeal and administrative litigation
The case was then brought to appeal by the trademark owner, which claimed that the trademark put to use, as shown in Figure 3, is substantially the same as the registered trademark.
Contrary to the opinion of the IP Office, the Board of Appeals assumed that the three coloured, vertical stripes on the registered trademark, which occupy a small proportion of the layout of the trademark, may convey to lay consumers a deep impression that they are simply of an ancillary decorative nature.
On the other hand, the eye-catching stylised words "USA” and “PRO" possess high distinctive character. On this basis, the selling of goods branded with a trademark consisting of the stylised words “USA” and “PRO” with distinctive character should be deemed proper use of the registered trademark, according to Article 3.2.1.1(3) of the Notice on the Use of Registered Trademarks. As a consequence, the Board of Appeals held that the trademark owner has used the challenged trademark on garments, sports bras, leggings etc. in Class 25 but not on goods in classes 18, 27, and 28, or shoes in Class 25.
Dissatisfied with the decision, the trademark owner initiated an administrative litigation with the IPC Court. Upon review, the IPC Court consented to the opinion of the Board of Appeals, assuming that the trademark shown in Figure 3, compared to the registered trademark, only omits the three coloured, vertical stripes on the left side of the registered trademark.
Since these omitted stripes cannot be directly vocalised and only occupy a small proportion of the layout of the trademark, they should be considered a non-dominant part of the registered trademark. As such, there is no change to the primary identifying part of the registered trademark, formed by the stylised words "USA” and “PRO", with the size of the letters gradually reduced from “U” to “A” and from “O” to “P”.
According to the general social consensus and consumer perception, such design creates an image that is identical to that of the registered trademark and thus the identity of the trademark in use and that of the registered trademark should not be denied in a sweeping manner.
Implications of the case
It can be understood, from the above-discussed case, that when a trademark owner has used a registered trademark with only the non-dominant part of the trademark changed, the registered trademark shall be considered as being used. However, to determine whether only the ancillary part of a trademark put to use has changed and whether it retains the same identity as a registered trademark still involves considerable uncertainty.
A trademark owner should preferably, as much as possible, use its trademark in a manner substantially identical to the registered trademark to avoid the risk of cancellation.
