The Supreme Administrative Court rendered the 105-Pan-394 Decision of July 28, 2016 (hereinafter, the “Decision”), holding that although the determination of whether a trademark is used should also take into account the goods to be put on the market, still such use should be sufficient to cause the consumers to identify it as a trademark.
According to the facts underlying this Decision, the Intervenor previously applied to register the “Bao Long Ma Je Yi Hao” trademark, which is the trademark at issue, and designated it for use on “nutritional supplements; nutritional supplements such as Antrodia cinnamomea.” The Appellant subsequently asserted that it had used the “Ma Je Yi Hao” trademark at an earlier time and thus filed an opposition. The Intellectual Property Office rendered a disposition to cancel the registration of the trademark at issue after its examination. Dissatisfied, the Intervenor filed administrative appeal, and a decision was rendered by the Appellee to “set aside the original disposition and to have the original disposing agency render a legally appropriate disposition.” Dissatisfied, the Appellant brought administrative action pursuant to the required procedure.
According to the Decision, although the marketed goods for the determination of trademark use are not limited to goods which have been put on the market and should also include goods to be put on the market, it is still necessary to substantiate “use in the course of business transactions” and “sufficiency for allowing relevant consumers to recognize it as a trademark with its use meeting general business transaction practices.”
The original decision held that the relevant evidentiary materials pertained to the public road shows for the experiment and research results of Ma Je Yi Hao rather than information or materials pertaining to the marketing of Ma Je Yi Hao. In addition, such evidentiary materials did not communicate the effect that the goods had been marketed in the market to establish that the consumers can successfully identify the sources of goods. Therefore, this could hardly serve as an argument for the use of Ma Je Yi Hao as a trademark and thus could not be relied on evidence for earlier use. Hence, it was held in the Decision that since the original decision was not erroneous, the Appellant’s appeal was rejected.