“Trademark Use,” as provided in Article 5 of the Trademark Law, means the use of a trademark for marketing purposes in any of the following manners to enable the relevant consumers to recognize it as a source-identifier:
- applying a trademark on goods or the packaging thereof;
- possessing, displaying, selling, exporting, or importing the goods mentioned above;
- applying a trademark on articles relating to services provided; and
- applying a trademark on commercial documents or advertisements relating to goods or services provided.
Moreover, the uses identified above can be conducted by means of digital audio/video, electronic media, the internet, or other media.
The stipulation of the aforesaid Article 5 was recently addressed by the Supreme Administrative Court (SAC) in a judgment rendered on December 30, 2020. In this judgment for a trademark opposition dispute, the SAC held that the term “for marketing purposes” in Article 5 should be interpreted as having the same meaning as “in the course of trade” provided in Article 16.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Therefore, the SAC pointed out, trademark use is not to be achieved only through activities of “paid or for-profit” nature. Asia Pacific Academy of Implant Dentistry v. Asia Pacific Association of Implant Dentistry, 109 Pan 670, SAC (December 2020).
As the case name reveals, this case pertains to a dispute between two dental associations, both acronymed “APAID”, over their trademarks specified in the chart below. For the reader’s convenience, we will simply call the two parties the Registrant and the Opposer.
The Registrant’s mark was registered on September 1, 2013 in respect of, inter alia, “editing, publication, search, subscription and translation services for books, magazines and periodicals” in Class 41. Soon afterwards, it was challenged by the Opposer who asserted it had been using the above-mentioned based-upon mark in the same or relevant services since 2009. The Opposer further claimed that in view of the geographical link and service proximity, the Registrant must have known the based-upon mark and filed the opposed mark only in an attempt to squat on the based-upon mark.
In May 2015, the TIPO rendered a decision holding that, in view of the prior use evidence the Opposer produced, the opposed mark shall be revoked partially in respect of conflicting services, including “editing, publication, search, subscription and translation services for books, magazines and periodicals”, and so on.
After the Registrant exhausted all available pre-suit remedies, this case was brought up for the IP Court’s review, and afterward the SAC’s appellate review. Following two rounds of appeals spanning almost five years, the issue of non-profit use of trademark takes center stage in the court proceedings, especially in the said SAC judgment rendered in the end of 2020. Before coming to the SAC’s seminal opinion, let’s first have a look at how the IP Court addressed this issue: “does non-profit use qualify trademark use?”
According to the IP Court’s findings, the Opposer is a professional organization founded in 2008, aiming to improve, promote and provide education, research, training and international academic exchanges in the field of oral implantology. These services are provided mainly through eponymous annual congresses open to members and the public alike. However, being a nonprofit organization, the Opposer did not prove that these services involve “for-profit business activities,” a requirement the IP Court held to be inherent in the test of “marking purposes.” As such, it was held that the Opposer’s prior use does not qualify as “trademark use” defined in Article 5 of the Trademark Law.
Yet the SAC has a different view:
- The term “for marketing purposes” stipulated in Article 5 should be interpreted to have the same meaning as the term “in the course of trade” provided in Article 16.1 of TRIPS. Within the definition of the term “marketing purposes” in Taiwan’s Trademark Law, trademark use is not evaluated based on the paid or unpaid nature thereof. Nor does the Law imply that the so-called “marketing” activities are restricted to “for-profit business activities.”
- While it is indicated in the legislative notes that “the purpose of Article 5 is to regulate trademark use activities of the commercial nature,” the word “commercial” should not be interpreted as indicating that trademark use is conditioned upon for-profit activities.
- Whether the use of the concerned trademark is for marketing purposes shall be determined from an objective perspective, rather than an interested party’s intention.
The SAC’s insight is undoubtedly great news for nonprofit organizations seeking trademark protection in Taiwan. More, in a dictum in this decision, the SAC reminded all parties (including the IP Office) that numerous nonprofit organizations, such as public universities and charitable organizations, have been allowed registration of their names as trademarks being used on a wide range of services and goods. The unexpressed concerns are unmistakable: if non-profit use is non-trademark use, then these nonprofit organizations (including the Registrant itself) will all be subject to the risks of seeing their trademark registration cancelled due to non-use—something the IP Office would least wish to occur. Whether the SAC’s decision will lead to an update of the IP Office’s bylaw on the interpretation of Article 5 is worth observing, although a complete solution to the non-profit use issue might be realized only in the next overhaul of the Trademark Law itself.