Legislative Yuan Passed Draft Amendment to Expansion of the Grace Period of Applicability for Invention and Utility Model in Patent Act
[ February 2017 ] >Back| Trademarks | ||||||||||||||||||
| I. | When a registered trademark is extinguished by reason of not being renewed, but is continuously used in commerce, the owner thereof can claim the bona fide and fair use to avoid infringement. | |||||||||||||||||
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| Facts: | ||||||||||||||||||
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The Plaintiff: Mr. TSAI, SAN-LIEN (hereinafter “The Plaintiff”)
The Accused: Mr. LIU, KUO-CHIN (hereinafter “The Accused”), the representative of CHIA CHANG PAINT CO., LTD. (hereinafter “CHIA CHANG”)
The Accused is the representative of CHIA CHANG who sold several buckets of paint to CHUNG TAI PAINT COMPANY in August, 2014. These buckets sold by the Accused were labeled with the words “征空” identical to the trademark owned by the Plaintiff. The Plaintiff sued the Accused infringement based on the Trademark Act. The judgment brought in a verdict of guilty to the Accused in the first instance. Then, the Accused was found not guilty in the second instance and the third instance according to Article 36, paragraph 1, subparagraph 3 of the Trademark Act in Taiwan.
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| Intellectual Property Court’s viewpoints: | ||||||||||||||||||
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Trademark Act Article 36.1.3 of the Trademark Law: “A registered trademark shall not entitle the proprietor to prohibit a third party from: (1)... (2)... (3) using bona fide, prior to the filing date of the registered trademark, an identical or similar trademark on goods or services identical with or similar to those for which the registered trademark is protected, provided that the use is only on the original goods or services; the proprietor of the registered trademark is entitled to request the party who use the trademark to add an appropriate and distinguishing indication.”
The trademark owned by the Plaintiff was filed on February 18, 2005, and registered on October 16, 2005. The trademark owned and used earlier by the Accused was filed on April 28, 1961 and registered on January 1, 1962, but expired on December 31, 1981 because of not being renewed. However, after the expiration of trademark right, the Accused continues using the trademark and has being selling paint with his trademark without alteration in different forms or supplementation with additional note for 60 years. Furthermore, the trademark owned by the Accused was used much earlier than the filing date of the trademark owned by the Plaintiff. Hence, the Judge deems that the Accused uses his mark with a bona fide intention and has no intent to cause a likelihood of confusion and unfair competition to relevant consumers.
Consequently, according to Article 36.1.3 of the Trademark Act, the trademark use by the Accused is beyond the exclusive right of the trademark owned by the Plaintiff and does not constitute a trademark infringement. As the result, the Accused can keep using the trademark on the designated goods originally registered, but has to add an appropriate and distinguishing indication.
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| Jaw-Hwa’s Advice: | ||||||||||||||||||
| In the end, the trademark owned by the Plaintiff was revoked by the Accused under the ground of non-use for a continuous period of three years on July 16, 2016. Kindly be advised that when you take over the family business, please be sure to check whether all the succeeded trademarks need renewal to keep them in force. Alternately, you may find a professional trademark attorney to help you. On the other hand, please make sure that your trademark meets the requirements of actual use of the Trademark Act before you claim your trademark right against a third party. Otherwise, you will put your trademark under a risk of being revoked. | ||||||||||||||||||
| II. | The Distinctiveness/Indistinctiveness of the Trademark | |||||||||||||||||
| When it comes to the distinctiveness of a mark, it is somehow controversial, for it sometimes involves the examiner’s subjective point of view (or his/her over-interpretation to a certain extent). Nevertheless, by studying some rejected cases below, let us try to find out if there are certain key factors/elements that will make your client’s mark be deemed an indistinctive one. You may want to advise your clients of the same before they plunge their limited budget into a “less distinctive” mark. | ||||||||||||||||||
| 1. | Combination of letters and numbers looks like a model number: | |||||||||||||||||
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The trademarks which look like (or indeed are) model numbers of the products are prone to receive an unfavorable decision since the TIPO will assume that these are just signs to indicate item numbers or model numbers of products and cannot be well recognized as a trademark on the designated goods by the consumers. A smarter way for filing the model-number-like trademarks will be adding your client’s house brand into the mark. For example, LG CORP. filed another trademark  (Registration No. 01810799) in Taiwan on the similar/same goods. With the support of the house mark “LG”, the aforesaid application is allowed for registration with the disclaimer of “G7” and the unfavorable result of being rejected is avoided . |
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| 2. | Direct description to the nature/function of the goods/services: | |||||||||||||||||
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| The above two trademarks , “Scratch Postcard” and “Talk Watch” , carrying the indications of “A postcard can be scratched / To scratch the post card” and “A watch can talk” are inevitably rejected. When functional terms become parts of the trademarks, it is hard for the examiner not to be picky on them, for these terms may be deemed as an explanation or a part of the tutorial/manual to demonstrate how to work the product out. Hence, the functional terms will be something you may advise your clients to avoid when they are coming up with a new mark. Or, adding other distinctive devices into the mark may be another possible solution to avoid being rejected as a whole. | ||||||||||||||||||
| 3. | Commercial Slogans/Jingles: | |||||||||||||||||
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Here comes another situation that the client would like to adopt a catchy slogan as their trademark. Yes, it might be distinctive but not as distinctive to be a trademark. During the substantial examination, the examiner usually rejects a slogan to be registered as a trademark according to the Examination Guidelines on Distinctiveness of Trademarks unless it has been substantially used and there is proof that it has acquired distinctiveness. This is because a slogan is normally used to express the ideas of a business or the features of its goods or services for advertising purpose. For cases like this, we usually advise our clients to start using the mark in the market as soon as possible, and collect the evidence of use as much as they can at the same time. By collecting abundant evidence of use, we may have better supports to argue that the Slogan/Jingle has acquired the second meaning and the distinctiveness through extensive and long-term use in the market.
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