According to the Trademark Act, the Intellectual Property Office can revoke trademark registrations at its discretion or upon an application by any third party if a registered trademark has not been used without justifiable reasons for a continuous period of three years. Once a non-use revocation application has been filed, the trademark registrant will have to prove that the trademark has been used within the three years prior to the date of the revocation application. The key issues relating to non-use revocation include:

  • how to determine whether the trademark has been used; and
  • whether the trademark has been used for actual trading in Taiwan.

In a recent non-use revocation case, the Intellectual Property and Commercial Court set out six factors to determine whether the use of a trademark fulfils the requirements of the Trademark Act:

  • The trademark owner's intent in using the trademark was to use it for marketing purposes.
  • The trademark owner has objectively used the trademark for the designated goods or services, or related objects, or has used flat images, digital audio, video, electronic media or other media to the extent that the relevant consumer would recognise the trademark as a trademark.
  • The trademark owner has used the entire trademark, without splitting it up.
  • The trademark owner has not altered the trademark or used it in a different form to that in which it was registered or supplemented with additional notes, such that the trademark is identical or similar to another party's registered trademark in relation to goods or services that are identical or similar to those for which the other party's registered trademark is designated, and hence there exists a likelihood of confusion for the relevant consumer.
  • The trademark has been used on the designated goods or services covered by the trademark registration.
  • The use of the trademark has not been suspended for a continuous period of over three years.

For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected]). The Lee and Li Attorneys at Law website can be accessed at