SAINT ISLAND INTELLECTUAL PROPERTY GROUP

In trademark infringement lawsuits, it is not uncommon for a defendant to assert bona fide prior use in defense. Basis for such prior use is found in Article 36.1.3 of the Trademark Act which states that use of a mark identical with or similar to another’s registered trademark is not infringement if such use occurred before the filing date of the registered trademark and was in good faith. 

In an appellate decision rendered in a civil action by the IP Court in February, 2015, the Court gave a quite comprehensive interpretation of bona fide prior use of a trademark. The interpretation is representative of the Court’s position, and is summarized as follows:

1. In order to establish bona fide prior use under Article 36.1.3 of the Trademark Act, the defendant must show by evidence that: (a) the defendant’s use of a trademark being identical with or similar to the registered mark owned by the complainant was made without knowledge of the registered mark and not for competition purposes; and (b) the defendant’s mark was used on the same or related goods/services. If, for instance, the defendant had prior knowledge of the registered mark and used an identical or similar mark with an intent to take advantage of the reputation established in the registered mark, the defendant’s use before the filing date of the registered mark cannot be considered bona fide prior use. 
2. Trademark rights are territorial, and so are prior use exceptions. Thus, prior use that occurred in foreign countries is not considered prior use in the context of Article 36.1.3 of the Trademark Law. By the same token, prior use that occurred in China and Hong Kong is not considered prior use in Taiwan.