According to Article 63.1.1 of Taiwanese Trademark Law, subsequent to registration of a trademark, the competent authority may, ex officio or upon request, cancel the registration where unauthorized alterations to or additional markings have been made on the trademark, thereby causing it to be identical with or similar to a trademark registered by another person in respect of the same or related goods, thus likely to engender confusion among the related consumers.
KGT International Corp. (hereinafter referred to as KGT) obtained a registration for the trademark 
in 2013 in respect of “purses; travelling trunks” etc. in Class 18 but has since used the mark in the form of 
.
RIMOWA GmbH (hereinafter referred to as RIMOWA), a world-known luggage manufacturer, filed in 2014 a cancellation action against the registered mark 
owned by KGT. RIMOWA claimed that the mark 
shall be removed from the Register as against Article 63.1.1 of the Trademark Law, since KGT has put to use its mark in a manner different from that as registered but similar to a prior registered mark, namely, 
.
The cancellation action was found to be well-grounded by Taiwan’s IP Office. In response, KGT took remedial actions via pursuing an appeal with the Board of Appeals and an administrative litigation with the IP Court in a row.
In December 2017, the IP Court rendered a Judgment[1], dismissing the administrative litigation filed by KGT, and ultimately cancelled registration of the mark 
.
The IP Court held that, in determining whether a registered trademark should be canceled in view of the stipulations of Article 63.1.1 of the Trademark Law, the following two questions need to be answered first:
Has a registered trademark been used in an alternate manner or have additional markings been added thereto when it is being used?
Is the trademark in actual use identical with or similar to a trademark prior registered by another person in respect of the same or related goods/services, thus likely to engender confusion among consumers?
In this regard, the IP Court pointed out that, the registered mark owned by KGT is actually composed of the Latinate wording “Rowana” and the three Chinese characters 諾瓦納; however, when the mark is being used, the Chinese characters are omitted and are replacled by an overall frame surrounding the Latinate word. In this situation, the trademark in actual use and the trademark as registered can in no event be recognized by lay consumers as one and the same trademark.
The IP Court further opined that, KGT’s registered mark in actual use is highly similar to RIMOWA’s prior registered mark in terms of appearance, pronunciation, and concept. Moreover, as the trade dress adopted by KGT’s luggage bears close resemblance to that long applied to RIMOWA’s luggage, use of the mark 
by KGT is very likely to lead consumers to assume that KGT’s branded luggage originates from Europe and thus arouse confusion.
This case suggests that, although Taiwan’s Trademark Law does not strictly require a registered trademark to be used in the exact same manner as it is registered, the Registrant, when put to use his/her trademark, must have in mind that the identity of the registered trademark and the trademark in actual use should be readily recognizable by lay consumers as one and the same; otherwise, the registered trademark might be vulnerable to cancellation.
| cancelled registered trademark |
trademark in actual use |
RIMOVA’s based-upon trademark |
 |
 |
 |
[1] IP Court 106 Xi-Shang-Su-Zi No. 71.