According to the Trademark Act, the Intellectual Property Office will – at its discretion or on the application of a third party – revoke a trademark registration if the trademark has not been used without a justifiable reason for the past three years. Once a non-use revocation has been filed, the trademark registrant will have to prove that the trademark has been used in the three years prior to the date of the revocation application. The key issues relating to non-use revocations include:

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

In a non-use revocation case in 2021, the IP Court held that if a trademark is advertised in Taiwan but the trademark registrant has no shop in Taiwan and carries out no transaction services in Taiwan, this does not meet the definition of "true use of a trademark" as stipulated in the Trademark Act.

The IP Court gave the example of a catering company that files and is granted a trademark registration for use in relevant catering services and uses the trademark on menus, price lists, business cards and other related documents in Taiwan or publishes ads on TV and in newspapers to promote the catering services that it provides. If it did not open any restaurants in Taiwan but promoted its restaurant services abroad, this would not generate any economically valuable market relating to catering services in Taiwan. It would therefore be difficult to prove that such use was in line with trademark use in Taiwan as required by the Trademark Act.

With regard to the actual case, the IP Court further specifically determined that the information disclosed by the trademark registrant clearly showed the use of the registered trademark on a relevant ad for a department store, but that the trademark registrant did not actually operate a department store in Taiwan. The discount coupons or leaflets issued by the trademark registrant at a travel exhibition were just for advertising activities. Consumers in Taiwan had to use such coupons in a department store in Japan, where the trademark registrant was located. All transaction services took place in Japan and no economic activities relating to department store services occurred in Taiwan. Such circustances did not comply with the true use of a trademark. Therefore, it could not be determined that the trademark registrant had used the disputed trademark in the designated service for the department store in accordance with the Trademark Act.

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