The Intellectual Property Court rendered the 105-Hang-Sang-Su-30 Administrative Decision of October 20, 2016 (hereinafter, the “Decision”), holding that if any person rushes to register a trademark merely because of the knowledge that the trademark has been used by another person first, the trademark registration may certainly be canceled pursuant to law, regardless of whether such earlier trademark is a famous trademark in Taiwan or elsewhere and whether it has been registered.
According to the facts underlying this Decision, the Plaintiff applied to the Intellectual Property Office (hereinafter, the “IPO”) to register the “_________[meaning “APAID”] APAID and Device” trademark (hereinafter, the “Trademark at Issue”) on October 12, 2012 and designate it for use in services of “editing, publication, search, subscription and translation of all kinds of books, journals, magazines and literature” under Class 41. The application was approved with the trademark registered as No. 1597817 Trademark. The Intervenor subsequently filed opposition against the Trademark at Issue on the ground that it violated Article 30, Paragraph 1, Subparagraphs 5, 11, 12 and 14 of the Trade Mark Law. The IPO subsequently rendered a disposition that the opposition should be upheld and the registration of the Trademark at Issue, which was designated for services of “editing, publication, search, subscription and translation of all kinds of books, journals, magazines and literature,” should be canceled. Dissatisfied, the Plaintiff brought this administrative action pursuant to the required procedure.
Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law specifically stipulates that a trademark shall not be registered if it is identical with or similar to another personÕs earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application. According to the Decision, the so-called “earlier used” trademark means that there are facts that indicate the trademark has been used to represent goods before application is filed to register another trademark. It does not mean that such earlier used trademark is registered earlier or is in a registered state. Therefore, this subparagraph applies if any person rushes to register a trademark merely because of the awareness that an earlier used trademark exists due to contractual, regional, or business connections, or any other relationship, regardless of whether such earlier used trademark is a famous trademark in Taiwan or elsewhere and whether it has been registered.
It was held in the Decision that when organizing the International Conferences of APAID in the Philippines and Thailand in 2009 and 2010, the Intervenor not only invited relevant experts to give lectures and engage in academic exchanges, the trademark relied on for the opposition was also printed in relevant conference proceedings and publications. This is sufficient to prove that the trademark relied on for the opposition had been used earlier to organize seminars and publish literature before the registration application for the Trademark at Issue was filed on October 12, 2012. The Plaintiff set up an academic organization consisting of dental implant dentists in Taiwan in July 2011, organized multiple academic seminars and published the journals of the organization. Therefore, the Plaintiff and the Intervenor were both in the implant dentistry industry. Before the registration application date of the Trademark at Issue, the fact that the trademark relied on for the opposition had been used earlier in publications and dentistry seminars can be ascertained based on common sense, information such as the APAID as an international organization and its academic seminars and publications, and through information channels such as entities in the same industry. Aware of the existence of the trademark relied on for the opposition, the Plaintiff used the same foreign language “APAID” to apply for the registration of the Trademark at Issue. This is sufficient to support that the Plaintiff intended to imitate the trademark relied on for the opposition. Since it was determined that the original disposition was not erroneous, the Plaintiff’s complaint was dismissed.