In early 2012, JIHSUN FINANCIAL HOLDING CO.,LTD. (hereinafter Parent Company) cited the registered trademarks owned by JIHSUN SECURITIES CO.,LTD. (a subsidiary of JIHSUN HOLDING, hereinafter Subsidiary) to file 14 opposition cases against the trademarks “JIHSUN-formative and SUN device” registered by Jih-Sun Security Co., Ltd. and Jih Sun International Leasing & Finance Co., Ltd. (hereinafter “opposed mark”). When Taiwan Intellectual Property Office (IPO) dismissed all 14 oppositions in late 2014, Parent Company filed an appeal to the Board of Ministry of Economic but also failed. Then, Parent Company decided to appeal these 14 opposition cases further to Taiwan Intellectual Property Court (IP Court) in an attempt to reverse the IPO’s decision
In the appeal to the IP Court, Subsidiary also stated that it is qualified as a co-plaintiff jointly with Parent Company. Subsidiary reasoned that because it is the owner of some of the cited trademarks in this opposition, so that the cases should be consolidated to be reviewed and determined altogether.
In response to Subsidiary’s request for joinder, the IP Court, through different judges, finally rendered diverse decisions in late 2016. Said decisions could be categorized into three opinions. The first opinion deemed Subsidiary’s joinder request should be denied as it did not meet the requisites of Article 5 of the Administrative Litigation Law. The second opinion deemed that Subsidiary is a legitimate plaintiff on the basis of its own cited trademarks, in accordance with the Supreme Administrative Court’s Joint Conference for Presiding Judge of September 2004; however, since Subsidiary can independently file another new opposition case based on Article 48.1 of the Trademark Law, there is no need for the case to be reviewed and determined altogether. Thus, Subsidiary has no standing to sue. The third opinion agreed that Subsidiary’s and Parent Company’s cases should be considered and determined together, and that Subsidiary is a legitimate plaintiff and also has the standing to sue. Notwithstanding the above three kinds of different opinions on joinder, in terms of final results, the IP Court eventually rendered the same decisions dismissing all the cases on the merits that there exists no grounds for opposition.
Thereafter, the appeal of Subsidiary and/or Parent Company reached the Supreme Administrative Court, where the latter upheld the above first opinion of the IP Court and clarified the requisites of Article 5 of the Administrative Procedure Law. According to the Supreme Administrative Court, since Subsidiary was not an original party in the opposition case and administrative appeal proceedings, its suit before the IP Court was not in accordance with Article 5 of the Administrative Procedure Law. Further, since Subsidiary’s case need not be considered and determined together, it is not a legitimate plaintiff. Therefore, based on Paragraph 10, Item 1, Article 107 of the Administrative Litigation Law, Subsidiary’s case should have been rejected. Although the IP Court’s second and third opinions were improper, since those cases were dismissed on the merits, there is no need for the Supreme Administrative Court to reverse the original judgments. From above decisions, it is confirmed that if a trademark owner of the cited trademark was not a party of an opposition before the IPO, said owner has no right to file an administrative suit before IP Court as a co-plaintiff in an attempt to reverse the IPO’s decision on opposition.
In reality, it is not uncommon for local distributors to take trademarks belonging to foreign brand company as cited trademark in opposition. There are also cases where conglomerates or large group of companies, like JIHSUN above, would use its affiliate’s or subsidiary’s trademark to oppose other’s trademark. Given the above Supreme Administrative Court’s opinion, a trademark owner should safeguard its own trademark by not letting it used as cited mark without knowledge, since it might result in co-existence and dilution of distinctiveness of its own mark if and when the one using the trademark to oppose other’s mark loses. To avoid the foregoing adverse situation, it is advisable for brand companies, especially foreign companies, to monitor closely its trademark status through local professional IP firms or to discuss with local distributors or agents beforehand on strategies to protect its trademark portfolio, such as filing of opposition, if necessary.