According to Article 63.1.2 of Taiwan's Trademark Act, there will be a risk of cancellation of the registration of a trademark if, without justifiable reasons, the registered trademark has not been put to use for three years since its registration or the use of the trademark has discontinued for a term in excess of three years. Court decisions show that the term “factors not attributable to oneself” refers to factors that are unforeseeable and inevitable as reviewed based on objective criteria and the attention of ordinary people; in other words, factors subjectively viewed as being not attributable to oneself do not fall into this category.
Courts’ latest attitude towards the issue of “justifiable reasons” are reflected in a recent case, where the aforesaid term “justifiable reasons” was addressed by the Intellectual Property and Commercial Court (IPCC) in a judgment (Xing-Shang-Su-Zi No. 50) rendered on April 7, 2025 and the judgment was subsequently upheld by the Supreme Administrative Court (SAC) in a ruling (Shang-Zi No. 308) rendered on December 24, 2025.
This case pertains to a non-use cancellation action filed on February 8, 2023 against Taiwan(R.O.C.) Trademark Registration No. 00170842 for the trademark “
” (challenged trademark) designated for use on “nightclub services, entertainment singing bar services, ballroom services” in Class 41. While the trademark owner filed counterstatements and evidential materials, the TIPO rendered a Decision to cancel the registration of the challenged trademark on the ground that the trademark owner failed to provide competent evidence of use in accordance with the Trademark Act. The Decision was sustained despite the trademark owner’s effort to bring this case for review by the Board of Appeals, and afterward the IPCC’s review and the SAC’s appellate review.
To defend the registration of the challenged trademark, apart from arguing that the submitted evidential materials can serve as proper evidence of use of the challenged trademark, the trademark owner also tried to justify the purported non-use of the challenged trademark within the contested three-year period by explaining their “justifiable reason”.
As asserted by the trademark owner, the challenged trademark was originally used on the restaurant located inside a clubhouse and the restaurant bearing the challenged trademark was indeed in business until, for some reason, the clubhouse closed down and was demolished, thus forcing them to cease operation of the restaurant under the challenged trademark and relocate their restaurant. Therefore, the trademark owner concluded that they ceased use of the challenged trademark because of a de facto obstacle, i.e. the aforesaid factor not attributable to themselves. They also added that in recent years, they have been planning the opening of a new restaurant in Taiwan, which demonstrates their plan, preparation, and strategy for using the challenged trademark.
The IPCC considered the trademark owner’s arguments unpersuasive and rendered a judgment, holding that:
- Although the trademark owner ceased operation of the restaurant since the clubhouse closed down and was demolished, and they had plans to open a new restaurant using the challenged trademark, the restaurant services are not one of “nightclub services, entertainment singing bar services, ballroom services” designated by the challenged trademark.
- The use of the challenged trademark was not restricted to providing the designated services at a physical location. Instead, the trademark use also included other acts for marketing purposes, such as using the challenged trademark on items related to the designated services “nightclub services, entertainment singing bar services, ballroom services”, or using the trademark through graphics, digital video and audio, electronic media, or other media that were sufficient to render it perceived as a trademark by relevant consumers. In this case, the trademark owner’s decision not to use the challenged trademark was simply based on their own consideration, which was a strategy made of their own volition instead of a factor not attributable to themselves. Therefore, the non-use of the challenged mark did not fall under the “justifiable reasons” provided in Article 63.1.2 of the Trademark Act.
Thereafter, the trademark owner filed an appeal with the SAC but the appeal was dismissed by the SAC in December, 2025. The registration of the challenged trademark was cancelled eventually.
There was a heated discussion about the issue of “justifiable reasons” a couple of years ago. In around 2020, worldwide governments implemented lockdowns to reduce infections during the COVID-19 pandemic. The lockdown measure forced many trademark owners to cease providing the designated services under their trademarks at physical sites. Therefore, there came along the question: whether the governmental lockdown measure constituted a “justifiable reason” for ceasing trademark use under the Trademark Act.
According to the aforementioned judgment, the governmental lockdown measure can hardly qualify as a “justifiable reason” for non-use of the trademark, given that even if the trademark owners were unable to provide services in physical places of business, they could still effectively use their trademarks through digital video, electronic media, or other media so that the trademarks could be recognized by relevant consumers.