SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan Intellectual Property  Office (TIPO) promulgated on August 23, 2019 a new Examination Benchmark regarding “Trademark Use”, which is drafted by making reference to a considerable number of the Judgments rendered by the IP Court and the Supreme Administrative Court during the interim between 2012 and 2019.

The significant amendments brought about by the new benchmark are substantially as follows:

1. Color variation
   When a word mark is registered in a single color and yet put to use in black or multi-colors, the registered mark shall be deemed to be properly used so long as the two versions may be perceived as capable of performing the same distinguishing function.
    
2. A registered mark is used in conjunction with another trademark or sign
   When a word and a device are severally registered, and yet the word mark and the device mark are put to use in combination, such use shall be considered to be proper use.  In case a person owns two registered marks, one formed by a word and the other by the word plus a device, use of the latter shall be considered to be tantamount to use of the former.
    
3. The trademark in actual use is a variation of the trademark as registered
   In actual use, when a signage, such as an exclamation mark or a line, a commodity or service name, or a description of goods/services is added to the representation of a registered mark, the registered mark shall be deemed to be properly used provided that such addition does not diminish the distinguishing effect of the dominant portion of said mark. On the other hand, when a disclaimer is entered into a registered mark and the disclaimed word or device is omitted from the mark in actual use, such use shall not be inured to the benefit of the registered mark.
    
4. A more strict standard is applied in determining whether use of a registered mark on a specific item of goods/service can be incurred to the benefit of another item of goods/service designated by the registered mark
   Under the local practice, when a registered mark is challenged by a third party through the filing of a non-use cancellation action, the registered mark owner needs to file the evidence of use of the mark established in the past three years to defend the validity thereof. 
   
   In the past, use of a trademark on a designated item of goods/service can be inured to the benefit of another designated goods/services of related nature. However, according to the new benchmark in which a more strict guideline is included, this benefit is applicable only to another designated goods/service of the same nature.   Taking “lipsticks” and “cosmetics” as an example, since they are deemed to be goods of the same nature, a trademark registered on “cosmetics” can be maintained if the trademark owner has submitted the evidence of use of the trademark on “lipsticks” against a non-use cancellation action. On the other hand, as “pharmaceuticals” and “nutritional supplements” are goods of related, not the same nature, use of a registered trademark on either of the items cannot be incurred to the benefit of the other.
   
   In addition, it is clearly indicated in the new benchmark that a registered mark shall not be considered as used if it is used on “freebees.”  This rule, however, does not apply to “gifts-with-purchase.”
    
5. Use of a registered mark on the Internet
   In view of the booming of e-commerce, trademark owners are apt to file evidence of use established on the internet against non-use cancellation actions. To accommodate this trend, the IP Office included some guidelines regarding which materials downloaded from the Internet can be accepted as “evidence of use” in the new benchmark. In general, web page screenshots, online transaction records, e-mails exchanged with customers, online advertisements, online media articles, electronic invoices and contracts entered into between a trademark owner and an Internet platform operator are all proper evidence of use.  If a trademark owner has in hand evidence proving that the relevant goods or services are offered on a website registered in a foreign country, he needs to gather additional evidence being able to prove that the commercial activities on the website have been extended to Taiwan, such as: 
   
   (i) consumers of the goods/services supplied on the Internet include those in Taiwan or the suppliers are located in Taiwan;
   
   (ii) the website offers delivery services to consumers in Taiwan, or includes an interface featuring traditional Chinese language or a local address/telephone number or any other means via which Taiwanese consumers can directly contact the suppliers for purchase purposes;
   
   (iii) the suppliers offer after-sale services in Taiwan; and
   
   (iv) the goods/services supplied are priced in New Taiwan dollars, among others.
    
6. The evidence of use established by a registered trademark ought to be in keeping with the commercial transaction habits in Taiwan
   All documents established during the course of commercial transactions may serve as evidence of use. As to advertisements on the local newspaper, they will be acceptable as evidence of use only if their contents or layout may readily attract consumers’ attention so as to achieve purchase purpose.

All in all, the new benchmark provides (i) a more clear-cut guideline in determining the identity of trademarks, and (ii) a more stringent criterion in determining whether the evidence of use of a trademark established on an item of goods/service can serve as use of the trademark on another item of goods/service.   In view of the implementation of this practice change, a trademark owner should do his utmost to ensure that his registered mark has indeed been put to proper use so as to avoid unexpected cancellation.