Determination Factors on Trademark Use
through Internet in Taiwan

In Taiwan a registered trademark must be used in accordance with the law. If, without justifiable reasons, a trademark has not been used, or use of the trademark has been suspended for three years, such non-use constitutes grounds for cancellation trial ex officio or upon a request by any other person. Per the practice in Taiwan, TIPO will not exercise its authority by initiating an ex officio cancellation trial against a registered trademark on the ground of non-use. Therefore, all the cancellation trials were initiated by a third party. “Use of Trademark” in Taiwan must satisfy the following two requirements, namely:

1. Subjectively, the user has the intention of using the trademark in the course of trade; and
2. Objectively, the use of which must be able to cause relevant consumers to recognize the trademark as such.

Also, the following highlights are to be observed in the determination of a trademark use.

1. The trademark in use must be the trademark as it was originally registered.
2. If the use of a registered trademark was in a form which differed from the form in which it was registered but does not affect the identity of the trademark according to general concepts prevailing in the society, it shall be deemed to have used the registered trademark.
3. Partial use of a trademark is not considered use of the mark.
4. A licensee’s use of the trademark shall inure to the registered owner’s use of the mark.
5. The user evidence of a registered trademark shall comply with the general practice of trade. Thus, the old practice to admit a mere advertisement on the newspaper/magazine without actual production or sales of goods as the proper use of trademark has been abolished.

However, due to the swift change of the digital transmission of information on computer networks, trademark use on webpages, as a way to attract consumers to browse and purchase products has become more important nowadays. As internet world has no boundaries, use of a registered trademark should still meet the definition of trademark use. Accordingly, TIPO has promulgated and enforced as from July 1, 2012 a “Notice on the Use of Registered Trademarks”. Per the said Notice, the general rules for determining trademark use through internet are as follows:

1. If the top-level domain of the website on which the registered trademark used is “.tw”, in principle, it can be considered that the user aims to market its goods/services in Taiwan and targets consumers within the territory of Taiwan.
2. However, if the top-level domain is located in a foreign country, then proof that the webpages is for marketing the goods/services and targets to consumers in Taiwan must be submitted. Such evidences could be, for example:
   1. Display of the registered trademarks and sales of the designated goods, provision of delivery services to Taiwan consumers, providing option for switching the original foreign language webpages to Chinese webpages in the website, etc.;
   2. Proofs that consumers indeed browsed the relevant webpages or purchased the goods/services through the information provided on the webpages;
   3. The trademark user has provided after-sale warranty or services, or has developed business relationship with individuals within Taiwan, or is engaged in other commercial activities;
   4. The trademark user displays on the webpages the address, telephone number, or other contact information necessary for Taiwan consumers to place an order directly with the trademark user; and
   5. The goods/services provided on the website can be legally delivered within Taiwan and settlement prices are in New Taiwan Dollars.

If the registered owner could produce and submit the above evidences, such as receipts, invoices, catalogues of the online shopping site, etc. in connection with orders placed by Taiwan consumers on the internet or by fax that local consumers did order and purchase its goods on the internet, then the said trademark could be considered to be in use in Taiwan.