Taiwan IPC Court’s Recent Opinion regarding Use of a Trademark Slightly Different from a Registered Trademark

The Trademark Law of Taiwan stipulates that, if a trademark actually used by the trademark owner differs from that as registered but without losing their identity according to the general social consensus, the registered trademark should be considered to have been used. To put it another way, although a trademark used may have slight difference in form from a registered trademark, if it essentially does not change the distinctive character of the registered trademark, the identity of the two trademarks should be established. Additionally, according to Article of the "Notice on the Use of Registered Trademarks” published by Taiwan's IPO, by altering the non-dominant part of a trademark in use, it does not necessarily mean that the primary distinctive character of the trademark has changed.

A recent Judgment rendered by Taiwan’s IPC Court on December 29, 2023 exemplifies  how to tell a non-dominant part of a trademark from a dominant distinguishing part of a registered trademark and to determine, in turn, that a trademark put to use and a registered trademark have identity.

In this administrative litigation, the plaintiff is the owner of a registered trademark  designated for use upon goods in classes 18, 25, 27, and 28. A third party initiated a cancellation action on the grounds that the registered trademark had been put to non-use for three consecutive years. The IP Office, upon examination, found that although the trademark owner had submitted evidence proving the ordering of some training garments, sports bras, leggings, T-shirts, etc. by local consumers from the website of his distributor, as shown in Fig. 2 and 3, the shown trademarks are not the same as the registered trademark which consists of the words "USA” and PRO" combined with three colored, longitudinal stripe designs. Specifically, the used trademarks omitted the eye-catching colored stripe on the left side of the registered trademark, thereby changing the distinctive character of the latter. This alteration suggests that the trademarks put to use do not have the same identity as the registered trademark.  Therefore, with no physical evidence lodged proving use of the registered trademark in its original format, the registered trademark shall be canceled.

The case was then brought to appeal by the trademark owner who claimed that the trademark put to use, as shown in Fig. 3 below, is substantially the same as the registered trademark.

Contrary to the opinion of the IP Office, the Board of Appeals assumed that the three colored, longitudinal stripes on the registered trademark, which occupy a small proportion of the layout of the trademark, may convey to lay consumers a deep impression that they are simply of an ancillary decorative nature. On the other hand, the eye-catching stylized words "USA” and “PRO" possess high distinctive character. At this rate, the selling of goods branded with a trademark consisting of the stylized words “USA” and “PRO” with distinctive character should be deemed proper use of the registered trademark, according to Article of the "Notice on  the Use of Registered Trademarks.” As a consequence, the Board of Appeals held that the trademark owner has used the challenged trademark on garments, sports bras, leggings etc. in class 25, but not on goods in classes 18, 27, 28, or shoes in class 25.

Dissatisfied with the decision, the trademark owner initiated an administrative litigation with the IPC Court. Upon review, the IPC Court consented to the opinion of the Board of Appeals, assuming that the trademark shown in Fig. 3, compared to the registered trademark, only omits the three colored, longitudinal stripes on the left side of the registered trademark. Since these omitted stripes cannot be directly vocalized and only occupy a small proportion of the layout of the trademark, they should be considered a non-dominant part of the registered trademark. As such, there is no change to the primary identifying part of the registered trademark, formed by the stylized words "USA” and “PRO" with the size of the letters gradually reduced from “U” to “A” and from “O” to P”. According to the general social consensus and consumer perception, such design creates an image which is identical with that of the registered trademark and thus the identity of the trademark in use and that of the registered trademark should not be denied in a sweeping manner. 

It can be understood, from the above-discussed case, that when a trademark owner has used a registered trademark with only the non-dominant part of the trademark changed, the registered trademark shall be considered being used. However, to determine whether only the ancillary part of a trademark put to use has changed and whether it retains the same identity with a registered trademark still involves considerable uncertainty. A trademark owner should preferably, as much as possible, use his trademark substantially identical with the registered trademark to avoid the risk of cancellation.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.