Main Points of Amendments to Guidelines for Design Examination in 2020[ November 2020 ] >Back
|Use of a Trademark on Goods of Subordinate Concept Will be Considered Sufficient Use on Goods of Superordinate Concept Thereof|
The Plaintiff filed a revocation application with the Taiwan Intellectual Property Office (TIPO) against the trademark at issue “ifixit” (Reg. No.1583371) in 2016 based on the ground of Article 63 I (2) of Trademark Act, i.e. the trademark has not yet been put to use on the designated goods or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use.
The trademark registrant (also “the intervening party” in the administrative litigation) filed a response with the evidence of use for the product “SDS quick-release connector” against the revocation. The TIPO deemed that the nature of “SDS quick-release connector” was equivalent to the nature of all the designated goods so the trademark at issue should be regarded as having been used. Therefore, the TIPO made a disposition to overrule the revocation application after the examination.
The Plaintiff was not satisfied with such disposition and thus filed an administrative appeal up to the TIPO’s superior institution, the MOEA, but failed in the administrative appeal. Then, the Plaintiff carried on the relief procedure to file administrative litigation up to the IP Court.
The IP Court determined that the trademark at issue should be partially revoked because the ground for revocation existed in the rest of the designated goods (subordinate items) of the trademark at issue except “hand tools, hand-operated” (the superordinate goods).
|The IP Court’s Viewpoints|
|1.||With reference to the judgment made by the Supreme Administrative Court, No.163 of 2017, from the perspective of the Trademark Act, whether a trademark is in use and whether the use thereof constitutes grounds for revocation under Article 63 of the Trademark Act are matters related to registered trademarks and their designated goods or services. Further, attention should be paid to whether the range of the goods or services on which a trademark is put to actual use conforms to the designated goods or services. On another note, the general concept, the superordinate concept as well as the subordinate concept of the goods or services should also be considered. A trademark put in use on specific goods (the subordinate concept) will be deemed sufficient use of the superordinate goods or services. On the contrary, it shall not be applicable.|
|2.||In the subject case, the applicant submitted the evidence of use for the product “SDS quick-release connector”. “SDS quick-release connector” is the subordinate goods of “hand tools, hand-operated” (the superordinate concept of goods) and therefore the trademark at issue can be deemed having been put in use on the goods “hand tools, hand-operated”. However, the other 15 designated goods are also the subordinate goods of “hand tools, hand-operated” but are not equal to “SDS quick-release connector”. Thus, the evidence of use of “SDS quick-release connector” cannot prove the use of the rest of the designated goods. The registrant failed to submit the evidence of actual use for the rest of the 15 designated goods and consequently the trademark at issue should be partially revoked.|
|We herewith list some other examples of sufficient use on superordinate terms for extra reference:|
|Q1:||We haven’t yet decided on an applicant when filing the new patent application. Can we leave the applicant’s information blank when filing and submit the applicant’s information after filing?|
When filing a Patent application, the applicant should be clearly indicated on the application form. Lack of the applicant’s information, the patent application will not be accepted under the practice in Taiwan since it is unable to confirm whether the applicant is corresponding to the subject of the intention and the efficacy in the application form. However, if the applicant’s information is provided before the dismissal decision is served, the date on which the applicant is provided shall be regarded as the filing date.
Exception: (Examination Guidelines of Patent 1-5-1)
If the relevant documents submitted at the time of filing are sufficient to determine the applicant, the filing date of the patent application will be unaffected even though the applicant's name is not indicated in the application form. However, the application form with the completed information should be provided within the specified time period as stated.
For example, only the foreign name of the applicant is stated in the application form without the Chinese translation/transliteration, or the applicant's name is not complete but can be recognized, or the applicant’s name has been indicated in the relevant documents of proof submitted with the application form when filing.
|Q2.||May I file a patent application in a foreign language? What kind of a foreign language will be accepted by the TIPO?|
|Yes, you can file a patent application with the required documents in English. While the description, claim(s), abstract and the drawing(s) are filed in a foreign language, the Chinese translation thereof must be provided within the time period specified by the TIPO. And, only the following foreign languages will be accepted, Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.|
|Q3.||Is this acceptable to file a patent application in Simplified Chinese?|
|Yes. The description, claim(s), abstract, and the necessary drawing(s) can be filed in Simplified Chinese. As long as the Traditional Chinese thereof is provided within the time period specified by the TIPO, the filing date shall be the date on which the Simplified Chinese version is originally filed. If the Traditional Chinese translation is not provided within the aforesaid time period, the patent application shall be dismissed under the practice in Taiwan. However, if the Traditional Chinese translation is provided before the dismissal decision is served, the date on which the Traditional Chinese translation is provided shall be regarded as the filing date.|
|Q1.||Can a trademark application be filed in the name of a branch office of a foreign company in Taiwan?|
|No, because a branch office does not have an independent legal personality, it should not be an entity capable of exercising obligations and rights. Hence, a trademark application should be filed in the name of the headquarters.|
|Q2.||Can an establishing company apply for a trademark application for registration in the name of the company's preparatory office?|
|Yes, an establishing company is considered to be the predecessor of the founded company in practice, and both of the companies refer to the same entity. However, the company registry must be supplemented after the company is registered, and the change of the applicant's name should be made.|
|Q3.||What’s the difference between a trademark registered in greyscale and in colours?|
|In principle, the mark should be filed based on the actual use of the mark or the mark to be used. If the color of actual use of the mark will be changed according to different circumstances and the trademark is registered in grayscale or single color but the registrant uses the mark with colors, the registered trademark can be considered to be in use as long as the main features used to identify the registered trademark is not substantially changed. If a trademark registered is a combination of two or more colors (i.e., colored mark), and the colors are the main features of the trademark, but the registrant uses the mark in grayscale or other colors, it is most likely that the impression of the consumers identifying the source has been changed according to the general social concepts and consumers’ perceptions. Then, the mark cannot be considered to be in use.|