keywords: trademark use; non-use cancellation; specification of goods and services
Since the last major amendment to Taiwan’s Trademark Act decades ago, trademark renewal procedures in Taiwan have been much simplified. Trademark owners can obtain another 10-year term for their trademark rights with filing of user-friendly forms, and the requisite document is just a Power of Attorney in a case of non-Taiwanese registrant. The scope of protection of a renewed trademark is principally identical with the original one, unless a partial renewal is conducted.
However, within the term of a trademark right, the IP Office’s revision of classification of goods and services is not uncommon, and even the concept of a generic term may be subject to change over time. Hence, the questions: will the protection scope of a trademark registration alter along with such a change? If the answer is yes, will that also affect the proof of use to be submitted in a non-use cancellation action? In a recent decision of the Supreme Administration Court (case number: (SAC) 110 Shang zhi No. 51), the Court opined that the scope of protection remains unchanged.
In this case, the registrant filed a trademark application in 2003 covering “computer hardware, computer software, calculators, cash registers.” The mark was then successfully registered in 2004, and after the first renewal in 2014 the registration term was extended to April 15, 2024. However, on April 24, 2019, a non-use cancellation action was filed against this registration.
In response to the cancellation action, the registrant submitted evidence of use of the mark on“barcode printers.” However, the IP Office was not persuaded by the registrant’s assertion that “barcode printer” falls within the concept of “computer hardware,” because the former belongs to subclass 091703 “computer application products” while the latter belongs to subclass 091701 “computer hardware” under the current classification system. Holding that the registrant failed to prove proper use of the mark on “computer hardware, ” the IP Office rendered a ruling cancelling the registration.
The registrant then appealed the decision to the the Board of Appeals, which partially reversed the IP Office’s decision. The Board held that “barcode printer” should be deemed as “computer hardware” because, at the time the mark was registered, “barcode printer” was classified under subclass 0917 which is simply “computer hardware.” Also, the functions, sales channel of “barcode printers” are not that different from regular printers, the Board said, so it is natural to consider “computer hardware” as a general denomination for “barcode printer,” and hence lawful use of the mark at issue on “barcode printers” constitutes trademark use on “computer hardware.”
The petitioner appealed the Board’s ruling to the Intellectual Property and Commercial Court (IPCC). IPCC concurred with the Board’s opinions and dismissed the suit. The petitioner then appealed the case to the SAC but still did not receive a favorable decision.
In this decision, with an expressed intent to protect a good faith registrant, the SAC indicated that although subclass 0917 was divided into 091701, 091702 and 091703 in the current Manual of Classification of Goods and Services which was amended after registration of the trademark at issue, as long as the registrant did use the mark on goods falling in subclass 091703, it is also deemed to have been used in subclass 091701, because goods in these subclasses are “of similar nature.”
Therefore, the SAC implied that, at least in a non-use cancellation action, the interpretation of designated goods and services of a trademark can as well be considered as of the time it was registered. Also, as this decision signaled, the SAC somewhat opened a door for use of a mark on a specific goods item to be deemed as use on other goods “of the same nature,” hence releasing registrants’ burden of proof of use. However, it should be noted that this opinion is not much in line with some of SAC’s previous decisions where, for example, SAC strictly distinguished the nature of “breads” and “cakes,” although both items fall in subclass 300602.
Takeaways
It is still worth further observation whether the SAC’s new line of thinking given in the decision briefed above will become the mainstream, as although this opinion is very favorable to registrants, it is not perfectly in line with SAC’s previous opinions. Anyway, as unpredictable changes in definition of commodity names constantly occur, it is recommendable for trademark applicants to include both general names and specific names they plan to use for their goods, so as to reduce the risks of protection gap. Also, after getting their mark registered, they should review their portfolios from time to time and file new applications to mend any gaps that pop up due to changes of circumstances.
