The Intellectual Property Office and IP courts in Taiwan have a tendency to recognize the eligibility of advertisements as evidence of use in non-use cancellation cases. However, in a recent non-use cancellation action, the IP Court almost unprecedentedly deemed that the newspaper advertisements submitted by the registrant, among others, to prove use of the challenged trademark did not meet the use requirements as stipulated in the Trademark Law, i.e., use of a registered trademark should be for promoting or marketing purposes and conform to commercial transaction habits.
In said non-use cancellation case, the IPO considered the evidential materials submitted by the registrant, which included newspaper advertisements soliciting distributors, distribution contracts, brochures, and actual samples of goods, sufficient to prove use of the mark on the designated goods. However, the IP Court revoked the IPO’s decision and ordered the IPO to cancel the challenged mark. With the following findings concerning the evidence of use lodged by the registrant, the IP Court ruled that the evidence of use as filed is insufficient to prove use of the mark:
i. The sole purpose of the advertisements was to solicit distributors, not for promoting sale of the designated goods. Moreover, no tangible proof was lodged to demonstrate that the registrant had actually arranged for the making and marketing of the designated goods as is the usual commercial practice.
ii. The distribution contracts could not be deemed evidence of use of the mark in the absence of tangible proof showing actual sale of the designated goods by the distributors.
iii. The brochures could not prove actual sale of the designated goods but on the contrary showed them as merely free gifts, let alone that no proof was submitted to demonstrate the making of the designated goods before the date the non-use cancellation action was filed.
In view of the IP Court’s more stringent attitude toward examination of evidence of use for a registered mark, particularly newspaper advertisements, it would be more prudent to ensure that placement of an advertisement to establish use of a registered trademark meets the use requirements stipulated in the Trademark Law.