Trademark use is the one of the core issues under the Trademark Act. According to the Trademark Act, the trademark use may involve in the issues of non-use revocation, the status of famous trademark, the prior use claim, the trademark infringement or prior use defense in good faith against trademark infringement.
However, it is a controversial issue of the definition of the trademark use. According to the Trademark Act, the so-called "trademark use" should be "in the course of trade". The Intellectual Property Office or the Intellectual Property Court or any other judicial authorities are inclined to define the trademark use just for sale or any other use with monetary consideration, exclusive of gifts.
Nonetheless, the Intellectual Property Office or the Intellectual Property Court is changing its opinions and accepts gifts as trademark use under certain situations.
The IP Court held gifts as trademark use in two non-use revocation administrative litigation cases against the VALENTINO trademarks in the name of Valentino S.p.A. Valentino S.p.A. did not sell any perfume bearing the VALENTINO trademarks prior 2008 but did give consumers perfumes as gifts when the consumer purchased other VALENTINO goods over certain monetary amounts.
The IP Court points out that since the gifts are given to promote the VALENTIO trademarked goods, such as gifts are still capable of being recognized by relevant consumers as a trademark, and then may be accepted as trademark use.
The IP Court's new opinions will definitely impact the results for other similar cases involving the trademark use issues.