According to past practice, the time to rule on the issues in an administrative litigation regarding a trademark registration application was “the closing of oral arguments at the first instance”. This meant that any facts or events that occurred before the date of closing of the oral arguments at first instance could be included in the judgment. This was because the courts generally believed that anything that happened before a trademark was registered was part of the preparation process before completion of the application proceeding. As such, if the law or factual situation changed before the decision was made, the authority was required to decide based on the amended law or facts at that time, and the judgment would always apply the new law.

However, this practice was altered by a recent judgment of the Supreme Administrative Court (102 year penze 526).  The judgment held that the choice of applicable law at the time of the judgment depends on whether the amended law is advantageous or disadvantageous to the applicant - the courts should not always adopt the amended law by default. 

The reasoning behind the judgment was that because the applicant filed the lawsuit at the administrative court, the court should have the right to examine whether the trademark application should be approved or rejected. If the applicant's request can be satisfied by applying the amended law, the court should apply that law; however, if the amended law is disadvantageous to the applicant, the court should apply the law that was effective at the time when the Taiwan IP Office (TIPO) examined the application.

Regarding the examination of facts at the time of the judgment, as the courts have the right to examine whether the trademark application should be approved or rejected, and as they should investigate the facts, the courts should not simply examine whether TIPO’s decision was illegal. As such, the courts should decide whether a specific matter should be “judicially reviewed” according to the nature of that matter. The new opinion emphasises that in a trademark litigation case, the temporal scope of investigation of the issues and the facts on which the judgment is based cannot be decided by a single standard and should instead be decided on a case-by-case basis according to the nature of each trademark matter.

This opinion appears to break from the past practice rule for deciding the time of the judgment benchmark in administrative litigation over trademark registrations. The Supreme Administrative Court's opinion may also affect the opinions rendered by lower courts. Recently, in a 2013 High Administrative Court seminar, the IP Court asked whether evidence of use of a mark after TIPO’s rejection decision should be admissible when deciding whether a trademark has acquired secondary meaning.

As indicated above, according to past practice, the time of the judgment benchmark is the closing of oral arguments at first instance. However, there is an exception for whether secondary meaning has been acquired, which must be ruled on at the time of TIPO’s final examination. According to past practice, if an applicant can still obtain registration through use after TIPO’s rejection decision, it may encourage applicants to file suit and to use the time during which the litigation was pending to change the facts and create secondary meaning through use of the trademark.

Thus, under past practice, the time to determine whether secondary meaning had been acquired was the time before and during TIPO's examination of the application. However, at the 2013 High Administrative Court seminar, the majority of participants agreed that evidence of use of the trademark after TIPO‘s decision should be reviewable by the IP court when determining whether the mark has obtained secondary meaning. Although this conclusion is not a precedent judgment, it is clear that opinions in this regard are gradually changing.  

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.