Taiwan Intellectual Property Office (TIPO) first promulgated on July 10, 2008 “Notice on the Use of Registered Trademarks” to enunciate and interpret the important issue of use of a registered trademark in Taiwan. Further TIPO amended and promulgated said Notice to follow the overhauled new Trademark Act enforced on July 1, 2012 and said Notice was also enforced as from the same date. The highlights of the said Notice are summarized as follows.
Definition of use
Per Article 5 of the prevailing Trademark Act, use of a trademark means any of the following act, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark:
- to apply a trademark on the goods or packaging or containers thereof;
- to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
- (3) to apply a trademark on the articles relating to the provision of services; or
- to apply a trademark on commercial documents or advertisements relating to goods/services.
The preceding circumstances shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media.
Requirements to satisfy for use of registered mark in Taiwan
The term “use of trademark” must at least satisfy the following two requirements:
- the user must have the subjective intention of using the trademark in the course of trade; and
- objectively, the use of which must be able to cause relevant consumers to recognize the trademark as such.
Ways to use a trademark
The ways to use include applying a trademark on goods or packaging or containers thereof; possessing, displaying, selling, exporting, or importing the goods referred to in the preceding subparagraph; applying a trademark on articles relating to the provision of services; applying a trademark on commercial documents or advertisements relating to goods or services; or applying a trademark by digital audio-visual means, through electronic media, on the Internet, or through other media.
Requirement of evidence of use by the trademark owner
The evidence of use of a registered trademark provided shall comply with the general practice of trade. (Article 57-III applies mutatis mutandis to Article 67 of Trademark Act)
User of the trademark
A registered trademark must be used by the owner of the trademark. However a registered trademark may also be used by a person consented to by the owner of the trademark, such as a licensee. A license shall have no locus standi against any third party unless it is recorded with TIPO, yet, however whether the trademark is in use is a question of fact. If the owner of a registered trademark has licensed others to use its trademark without recordal of the license in TIPO, the licensee’s use of the trademark can still be regarded as legitimate use of the trademark by the owner of the trademark.
Determination of use of registered trademarks
The trademark in use must be the trademark as it was originally registered, and it must be used on the goods/services desinated in the registration. In determining whether a registered trademark is in use, the factors to be considered include whether the user has, for the purpose of promoting the goods, put the trademark to genuine use in the course of trade, and whether relevant consumers could recognize it as a trademark to distinguish the goods/ services from those of others.
The trademark used must be of same identity with the registered mark
In principle, a registered trademark should always be used in its entirety as it was originally registered. However, use of a registered trademark in practice in a form which differs 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, shall be deemed to have used the registered trademark. In actual use, change of a registered trademark in terms of size, proportion, font, or arrangement of the words or elements is usually regarded as a minor change of form and does not affect its identity. However, determination of identity or not shall be made by the facts in each individual case and according to the common concept in the society and the perception of consumers.
- Change only the arrangement of the vertical words to the horizontal words in the trademark – OK
- Change only the font of the words in the trademark – OK
- Change only the minor (non-dominant) portion of the trademark – OK
- Change the color of the registered trademark
A. Registered black and white mark but use in other colors -OK
B. Registered color mark but use in black and white or other color – NO
Partial use
When actually used, a registered trademark should be used in its entirety; use of any part thereof alone is not allowed. Partial use is not considered use of the registered trademark. For example, if a trademark was registered with Chinese and Roman name but in actual use only Roman name was used, it shall not be considered the registered mark has been in use.
Justifiable reasons for non-use
Once a trademark is registered, the trademark owner enjoys the rights to the trademark for a term of ten years, and the registration thereof may be renewed every ten years. However, after its registration, a trademark must be put to use 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.
“Justifiable reasons” means that the trademark owner fails to use a registered trademark due to a factual obstacle or any other reason not attributable to the trademark owner such as, a marketing approval from the National Health Administration for a medicine has not been issued, prohibition from import for sale in Taiwan, natural disasters, etc.
Export of goods
“In the course of trade” in Trademark Act refers to the act of sale in the local market and for export. “Export” means that products are exported from the territory of Taiwan. Although the commercial transactions following the export are conducted in a foreign market, yet per Trademark Act, the registered trademark should be considered to be in use so long as it is displayed on the exported goods.
In the case of OEM or ODM, a foreign owner of the trademark commissions a Taiwanese maker to manufacture goods under foreign owner’s trademark and sells the goods in foreigner owner’s home country or a third country, although the merchandise is not sold directly in Taiwanese market, yet it is indeed manufactured in Taiwan and such use of the trademark also complies with Taiwanese businesses’ normal practice in international trade, so the trademark can be considered to be in use.
Forms of valid user evidence
The user evidence must display the trademark registered and the date and the user. The admissible user evidence of a registered trademark may be: articles or commercial documents on or in which the trademark is displayed (such as goods, photographs, packaging, containers, order forms for signboards, receipts for decoration, contracts, shipping documents, export declarations, advertisements, catalogs, posters, or promotional leaflets, etc.), or business documents or photographs of the business premises related to the services which show the trademark, along with evidentiary documents of revenues from the services offered, such as invoices, receipts, quotations, or relevant advertisements.
Also it is important to note that the submitted evidence of use of a registered trademark must not be a false or fabricated one and must comply with general practice in the trade.
