In trademark cases it is often difficult to determine whether use evidence submitted by a registrant complies with the requirements for proving actual use in a trademark revocation application, especially when the trademark registration covers numerous goods. For example, if a trademark registration covers “shampoo, soap, lotion” and the registrant in a revocation application submits use evidence for soap only in order to prove actual use, can the mark also be deemed to have been used for shampoo and lotion, thus leading to rejection of the revocation application?
The Taiwan IP Office (TIPO) previously dealt with the issue of numerous goods in a revocation application in two ways. If a revocation application was filed to revoke an entire registration (ie, all of the goods covered in the registration) but use evidence was submitted by the registrant for only one of the goods identified, the revocation application would be rejected. The State Administration for Industry and Commerce of the People's Republic of China currently takes this approach. If a revocation application was filed with respect to only a portion of the registration, TIPO would examine each of the goods and revoke the registration for those goods for which no use evidence was submitted, preserving the registration with respect to the goods for which use evidence was submitted.
However, several years ago the Supreme Administrative Court issued a decision holding that TIPO must examine the use situation with respect to each of the goods, regardless of whether the revocation application is filed for all or only part of the goods in a registration. As many registrations cover a substantial number of goods, it is difficult to examine use with respect to all of the goods identified.
Thus, to comply with the Supreme Administrative Court's ruling, TIPO changed its examination process for revocation applications. The new process uses TIPO’s numeric subclassifications. In general, where the goods subject to a revocation application fall into a subclass having a four-digit class heading group and use evidence is submitted for any of the goods belonging to the subclass, all of the other goods identified that belong to the same four-digit subclass will be deemed to have likely been used. However, this determination is not absolute and actual use situations may still be examined if specific goods are contested. If the nature of certain goods is similar to the goods in the four-digit subclass for which use evidence is submitted, the target mark will be deemed to have been used for certain goods for which use evidence cannot be submitted. However, until now this situation has remained ambiguous.
The IP Court recently issued a judgment holding that in a revocation application, a registrant must submit use evidence for each identified good. However, it stated that if other goods are of the same nature and use evidence is submitted for these goods, it can be held that the target mark has been used on all of the goods with a similar or identical nature. Thus, the 'identical nature' standard can refer to the classification group information as published by TIPO. In addition to four-digit subclasses, TIPO also uses six-digit subclasses. Goods belonging in a particular six-digit subclass are deemed to be goods of a similar or identical nature. Thus, a determination of whether certain goods have the same nature can be based on whether the relevant goods belong to the same six-digit subclass.
As such, if a trademark is registered for “shampoo, soap, lotion” and the registrant in a revocation application submits use evidence for soap only to prove actual use, shampoo can also be covered by the use evidence because shampoo and soap fall into the same six-digit subclass (030104). However, the registration for the target mark will be revoked for lotion because lotion belongs to a different six-digit subclass (030101), and thus the use evidence for soap cannot cover lotion.
The judgment established clear criteria for revocations. As revocation is an efficient means to resolve the issue of a conflicting prior trademark, the process of filing and examining a revocation application will affect whether a revocation applicant can deal with obstacles easily. The ruling not only gives registrants a clear guide for the submission of use evidence when their trademarks are targeted for revocation, but also gives revocation applicants a clear understanding of the use evidence requirements so that they can decide whether and how to apply for revocation.
Yulan Kuo, Ching-I Lu
This article first appeared in IAM. For further information please visit www.iam-media.com.