Taiwan Trademark Law adopts a post-registration opposition system, allowing any third party to file an opposition action against a registered trademark during a three-month period following the granting of registration. Once the mark is revoked, the mark shall be deemed not to have been registered ab initio. Also according to the law, the Trademark Office may, ex officio or upon request, cancel a registered trademark if the mark has not been put to use or use thereof has discontinued for three years without a justifiable reason.
Taiwan Tobacco & Liquor Corporation (TTLC) filed an application to register the trademark “Taiwan Green Beer in Chinese characters” in Class 32 in respect to “beer” and the trademark was registered on June 16, 2006. During the three-month opposition period, Taiwan Tsing Beer Co., Ltd. (TTBC) filed an opposition action thereagainst based upon its prior trademark registration for “Taiwan Green Beer in Chinese characters” in Class 32.
Three years after registration of the opposed mark while the opposition case was still pending, TTBC also filed a cancellation action thereagainst for the reason that the mark has not been put to use, as is required to do so during the three-year span.
TTLC admitted that the mark indeed has not been used since its registration. However it also defended that the mark being opposed is facing a possibility of revocation and if the mark is revoked through opposition proceedings, it shall be deemed not to have been registered in the first place. Alleging that use of a possibly unregistered mark might expose it to the risk of infringement against the trademark owned by TTBC, TTLC claimed it has “justifiable reason” to put the mark in an idle status.
The Intellectual Property Office, after examination, rendered a Decision to cancel registration of the opposed mark, holding that the reason submitted by the Registrant to justify non-use of the mark is groundless. Being dissatisfied with the Decision, TTLC appealed the case to the Board of Appeals and then to the IP Court.
After hearing the case from all aspects, the IP Court held that “justifiable reason”, as specified in Article 57.1 of the Trademark Law, only refers to those factors or circumstances not attributable to the registrant, viewed in an objective perspective. In the subject case, TTLC’s reason for non-use is simply based upon a subjective hypothetical presumption that use of its mark might face an infringement lawsuit, not based upon any material fact which may interfere with use of the mark. Hence, the reason alleged by TTLC is not an acceptable “justifiable reason.”
The IP Court hence adhered to the Decision rendered by the Intellectual Property Office to cancel the registered mark “Taiwan Green Beer in Chinese characters”. Thereafter, the IP Court’s Ruling was rubber-stamped by the Supreme Court in its Ruling No. 100-PanZi-996 in June of 2011.