In Taiwan, trademarks may be registered for use in “retail services” under Class 35 of the Nice Classification. The Intellectual Property Office (the IP Office) has also issued examination guidelines in this regard. According to these guidelines, such services are divided into two categories:
General merchandise retail services; and
Specific goods retail services.
The primary distinction lies in whether the retail services are provided in the form of a speciality store dedicated to particular goods. In other words, the two differ in their business models, and, consequently, in the breadth and variety of goods offered for sale.
Based on general market practices, it is unlikely that an applicant would simultaneously provide retail services through non-speciality and speciality forms within the same sales channel. That is, unless the applicant intends to use the same trademark across different sales channels, a single trademark application designating general merchandise retail services would typically not also designate specific goods retail services.
On the other hand, under the examination guidelines, when a registered trademark is designated for use in both general merchandise retail services and specific goods retail services, particular care must be taken to retain separate evidence of use to avoid vulnerability to a non-use cancellation. In January 2026, the Intellectual Property & Commercial Court (the IPC Court) rendered a judgment (114 Xing-Shang-Su 27) addressing evidentiary issues concerning such trademark registrations, which offers useful guidance.
The IP Office’s findings
In the non-use cancellation action at issue, the challenged trademark ‘Hyper’ (Registration No. 1511906) was designated for use in various general merchandise retail services in Class 35, such as department stores, supermarkets, convenience stores, and shopping centres. In the same registration, it was also designated for certain specific goods retail services, including the wholesale and retail of household daily necessities, cosmetics, tobacco products, and alcoholic beverages.
In July 2022, a third party filed a petition to cancel the registration with respect to the “retail and wholesale of tobacco products”, on the ground that the mark had not been used for three consecutive years in connection with that service. In response, the trademark owner submitted evidence including news reports, flyers, photographs, coupons, floor guides, signage photographs, and a first-floor layout plan, all relating to the opening of a hypermarket bearing the disputed mark in September 2020, to prove trademark use.
The IP Office found that this evidence was sufficient to prove use of the disputed mark in connection with general merchandise retail services such as shopping centres and hypermarkets. However, it did not consider that the trademark owner had provided adequate evidence of use with respect to “retail and wholesale of tobacco products”. Specifically, the evidence (primarily undated photographs) only showed that a tobacco sales area existed on a certain floor of the store but did not show that such area bore signage displaying the ‘Hyper’ mark, nor did it indicate the precise location or timing of the establishment of such tobacco sales counters.
The IP Office concluded that this evidence failed to prove that the mark had been used in a manner enabling relevant consumers to recognise that it served to identify services involving the offering of various tobacco products from different brands for selection.
Appeals
The case was appealed to the appellate board and then to the IPC Court. The court noted that the apparent gaps in the evidence were understandable, given that Taiwan’s Tobacco Hazards Prevention Act imposes strict regulations on sales channels, venues, warning labels, display methods, and target consumers of tobacco products. These restrictions, in turn, create practical difficulties for trademark owners in establishing and preserving evidence of use.
The court further observed that the promotional direct mail cover pages, floor guides, and signage introductions submitted by the trademark owner indeed contained no tobacco-related advertising or signage, but this was a consequence of compliance with the statutory restrictions under the Tobacco Hazards Prevention Act.
Additional affirmative evidence submitted by the trademark owner during the litigation was also accepted by the court. This included a YouTube video (created by a third-party user) showing that, within the hypermarket operated under the disputed mark, a dedicated tobacco sales area and a separate checkout counter were set up outside the general merchandise checkout area, in order to comply with regulatory requirements. The court found that this proved the trademark owner’s intention to provide a separable tobacco sales channel in addition to the premises for its general retail services.
With the acceptance of this video, the previously submitted evidential materials formed a meaningful chain of evidence, including tobacco sales data (previously regarded by the IP Office as merely internal records), as well as promotional materials, floor guides, and signage.
Based on the above, the IPC Court held that, in light of ordinary commercial practices and general consumer perceptions, consumers should be able to recognise that the disputed mark had been used not only for general merchandise retail services but also genuinely used for the retail and wholesale of tobacco products. This is because the trademark owner had indeed (in compliance with the law) established a relatively independent sales channel for tobacco products within its store, and that channel was sufficiently linked to the use of the trademark in the store’s marketing and promotional materials.
Takeaways
The key implications of the case are as follows:
Although the IP Office’s Retail Services Examination Guidelines adopt a binary classification of such services, they do not preclude a trademark application from designating general merchandise retail services and specific goods retail services simultaneously.
At the same time, the IPC Court adopts a rigorous approach in assessing evidence of use. Such evidence must be evaluated separately according to the nature of general merchandise retail services and specific goods retail services. In principle, evidence of use for general merchandise retail services cannot serve as evidence for specific goods retail services, and vice versa.
In this context, the judgment should be understood as a meaningful exception. While the court did not exclude the possibility that evidence relating to hypermarket operations could serve as evidence of use for tobacco retail services, this was due to the statutory restrictions on tobacco marketing, which prevented the trademark owner from actively promoting such services or producing related advertisements or flyers. For other types of specific goods retail services, trademark owners are still expected to provide evidence specifically directed to those services.
