2018.8.2
Jane Tsai
The Supreme Administrative Court rendered the 107-Pan-446 Decision of August 2, 2018 (hereinafter, the “Decision”), holding that although the evidence of use for trademarks or marks is not limited to domestic evidence, still the precondition is that overseas evidentiary materials should be knowable to relevant domestic enterprises or consumers.
According to the facts underlying this Decision, Appellant Company A applied to the Intellectual Property Office (hereinafter, the “IPO”) in 1993 to register the “RAVAGLIOLI and Device” trademark and designate the same for use on goods such as jack stands and jacks in Class 84 in the Classification of Goods and Services under Article 24 of the Enforcement Rules of the Trademark Law effective at that time. After the application was reviewed, an approval was granted and the trademark was registered as No. 631275 Trademark (hereinafter, the “Trademark at Issue”). The Appellee subsequently filed an invalidation action in 2013. After the invalidation was rejected, the Appellee filed an administrative appeal and brought an administrative action. The decision on the administrative appeal and the original disposition were reversed after the original trial court ruled that the IPO shall participate in the lawsuit, and the IPO was required to render a disposition to revoke the Trademark at Issue. Dissatisfied, Appellant Company A filed this appeal.
According to this Decision, although the evidence of use for trademarks or marks is not limited to domestic evidence, still the precondition is that overseas evidentiary materials should be knowable to relevant domestic enterprises or consumers. In addition, a trademark holder puts in massive money, efforts and time to better differentiate the sources of its goods or services. This is the reason why more effective protection is provided to famous marks. The scarcity or high prices of goods or services may not necessarily be linked to the formation of famous marks as evidenced by the fact that certain famous affordable apparel trademarks or famous fast food trademarks in the market are neither scarce nor expensive. The original decision concluded that a famous mark essentially entails scarcity and high prices. Therefore, it inferred that the trademark which served as the basis of invalidation was a famous mark since the goods on which such trademark was designated for use fetched high prices. It was inappropriate for the original decision to make such inference.
It was further pointed out in this Decision that whether the Appellee in this case had factually promoted the trademark which formed the basis of invalidation or put in massive money, efforts and time in such trademark should have been thoroughly investigated. To wit, the circumstances in which the trademark which formed the basis of invalidation was used and whether the trademark was famous in this case should be generally determined in reference to evidentiary materials for its actual use. However, the few sales records submitted by the Appellee could only prove the use of such trademark in Taiwan prior to the registration of the Trademark at Issue but could not substantiate that the trademark which formed the basis of invalidation had been famous upon registration application for the Trademark at Issue. In addition, famous finished goods of products do not mean that their ancillary parts and components or backend service mechanical parts or goods are also famous. The original decision was not appropriate when it concluded that since the goods on which the trademark which formed the basis of invalidation was used served well-known car models in the world, such trademark was famous. In addition, whether its agents are changed and whether massive money, efforts and time have been committed to promote such trademark in Taiwan are different matters and should not be relied on as the basis for determining the degree of fame of the trademark which formed the basis of invalidation. Moreover, since the trademark which formed the basis of invalidation had agents in Taiwan, this calls into question why the invalidation had not be filed until 20 years later, making it difficult to prove that such trademark was a famous mark. Since it is necessary to investigate whether such disadvantage should be suffered by the party filing the invalidation action, the original decision was reversed and remanded.