Under what circumstances does the TIPO initiate revocation ex officio if a trademark has not been used for three years?
[ July 2023 ] >Back| Trademark | ||||||||||
| I. | Under what circumstances does the TIPO initiate revocation ex officio if a trademark has not been used for three years? | |||||||||
| There is no specific regulation determining when the cancellation will be initiated by the TIPO ex officio. According to the search of the revocation cases from the database of the TIPO, we concluded the following two circumstances: | ||||||||||
| 1. | When a company has been dissolved and its trademark has been registered for more than three years, the TIPO may suspect that the registered trademark has not been used or has been continuously unused for a period exceeding three years, thereby violating Article 63.1(2) of the Trademark Act. The TIPO then initiates a revocation ex officio against the registration and notifies the registrant within a specified period to provide evidence of trademark use. Failure to respond within the specified period will result in revocation of the trademark. | |||||||||
| 2. | When the TIPO receives a complaint from a third party by the reason that the actual use of the trademark may cause the public to be misled about the nature, quality, or origin of the goods, the trademark will be revoked according to Article 63.1(5) of the Trademark Act if the registrant's response lacked a reasonable explanation. | |||||||||
| Article 63 of the Trademark Act: | ||||||||||
| The Registrar Office shall, ex officio or by request, revoke the registration of a trademark if such trademark is in any of the following: | ||||||||||
| (1) | where the trademark is altered by the proprietor in different forms in which it was registered or supplemented with additional notes whereby the trademark is identical with or similar to another person’s registered trademark in relation to goods or services which are identical with or similar to those for which another person’s registered trademark is designated, and hence there exists a likelihood of confusion on relevant consumers; | |||||||||
| (2) | where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee; | |||||||||
| (3) | where no appropriate and distinguishing indication is added pursuant to Article 43, unless the indication has been added and hence there does not exist any likelihood of confusion before the disposition of revocation rendered by the Registrar Office; | |||||||||
| (4) | where the trademark has become the generic mark or term, or common shape for the designated goods or services; or | |||||||||
| (5) | where, in consequence of the actual use of the trademark, such trademark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services. | |||||||||
| II. | Trademark Invalidation Case About Pet Related Products | |||||||||
| Trademarks of both parties: | ||||||||||
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| In this case, the applicant of the Invalidation claimed that their trademarks are well-known ones, and the respondent has copied their trademark. They argued that the trademarks of both parties are similar, and the goods/services are also similar, leading to a likelihood of confusion. However, based on the evidence presented by both parties, the TIPO has rejected the Invalidation. The followings are the TIPO's opinions: | ||||||||||
| 1. | Low degree of similarity between the trademarks: | |||||||||
Although both trademarks include the letters "C, I, A,", the trademark at issue combines a design of animal footprint and an animal head cartoon image between "ci" and "as" and has no specific meaning, regardless of whether it is the combination of "ci" and "as" or the design of "cioas". On the other hand, the applicant’s trademarks and  are composed of "CIAO" which means "hello" or "goodbye" and the combination with the Japanese words "チャオ". Although there are some shared letters between the trademarks of the two parties, the overall design and impression of the trademarks are significantly different, indicating a very low degree of similarity. |
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| 2. | The fame of the trademark at issue and its level of fame: | |||||||||
| After a comprehensive judgment of the evidence presented by the applicant, the TIPO concluded that it was insufficient to prove that the applicant’s trademarks have gained significant fame among relevant businesses or consumers in Taiwan before the filing date of their trademarks (September 11, 2020). The TIPO's opinions of the applicant's evidence are as follows: | ||||||||||
| (1) | The introductions of the applicant and their related companies, a list of trademark registrations in various countries, and the business registration documents: These pieces of evidence provide information about the company's development history and the acquisition of trademark rights but do not reveal the actual use of their trademarks in products related to pet food. | |||||||||
| (2) | Invitations and award certificates/photos received by the applicant for their trademarks from the World Branding Awards between 2017 and 2019: These indicate that the trademarks have received recognition internationally. However, whether this recognition has become widely known among relevant businesses or consumers in Taiwan still needs to be determined based on actual evidence of use. | |||||||||
| (3) | Invoices and shipping documents for the importation of products bearing their trademarks through a Taiwan agent from June 2018 to June 2020: The marketing period covered by this evidence is approximately two years only. | |||||||||
| (4) | Advertising videos through the applicant's Taiwan office: These videos were aired from August to September 2020, just one month prior to the filing date of their trademarks. | |||||||||
| (5) | Webpages obtained through Google and Yahoo searches using the keyword "CIAO貓": Although phrases like "Japan's best-selling cat food" were found, along with information about store locations in Taichung (middle Taiwan), there was no available sales data to ascertain the level of recognition of their trademarks among consumers in Taiwan. | |||||||||
| (6) | Other pieces of evidence were later than the filing date of the trademark at issue. | |||||||||
| (7) | A blog post on the "Brand Addiction" website dated September 3, 2017, and webpages on "CIAO啾嚕" in Wikipedia: These indicated that the applicant, INABA Shokuhin Co., Ltd., has obtained registrations for cat pet food in Taiwan and other countries. Their products were marketed in Taiwan with advertising campaigns imported before the filing date of the trademark at issue (September 11, 2020). However, based on the existing evidence provided by the applicant, the period of marketing for their trademarks in Taiwan was relatively short, with limited advertising and consumer recommendation articles. At most, it can be acknowledged that the applicant has used their trademarks in cat pet food and similar goods since 2017. | |||||||||
| 3. | The strength of trademark distinctiveness: Both trademarks have considerable distinctiveness. | |||||||||
| 4. | The registration of the trademark at issue was made in good faith. | |||||||||
| Based on the evidence provided by the respondent regarding the use of the trademark at issue, it is evident that the trademark at issue has been marketed and launched after registration. Furthermore, the overall similarity between the trademarks of the two parties is very low. There is also no specific evidence to prove that the respondent had the intention or malicious intent to imitate the trademarks or associate with another party's trademarks for the purpose of profiting. Therefore, it is difficult to argue that the registration of the trademark at issue was made in bad faith. From this case, it is evident that the TIPO considers not only the similarity of trademark designs and the similarity of designated goods or services but also factors such as the good faith of the respondent and the actual use of the trademarks of two parties in the market. If a trademark is claimed to be famous but has only been used internationally and not in Taiwan, the extent to which it is well-known among consumers in Taiwan needs to be considered and determined after considering various factors. Additionally, we suggest that the trademark applicants strive for highly creative designs and have reasonable grounds for their creation, as this can effectively defend against the claims of imitation by a third party. After obtaining a trademark registration, it is advisable to actively use the trademark to create an impression in the minds of consumers. Even if there happens to be an occasional similarity with another party's trademark, if both trademarks have coexisted for many years without causing confusion, it can be a favorable defense strategy. Conversely, if a long-term used trademark is imitated by others, proactive measures can be taken by presenting accumulated evidence of trademark use and asserting the fame of the trademark to cancel the application of the other party's trademark. In trademark disputes, it is necessary to consider all the presented evidence comprehensively, considering the factors such as the degree of similarity between trademarks, the degree of similarity between goods or services, the good faith of the respondent, and the level of distinctiveness. When the degrees of similarity in the trademarks as well as the designated goods or services are low, a higher level of uniqueness in the trademark and active usage of the trademark are more likely to result in favorable outcomes. |
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