2018.5.31
Ankwei Chen
The Supreme Administrative Court rendered the 107-Pan-Zi-301 Decision on May 31, 2018 (the “Decision”) in which it held that materials distributed for a conference, and publications made based on the papers published at such conference, are merely incidental publications of the conference; whether trademark use is present requires further investigation.
Plaintiff in this case applied to register as a trademark “Asia Pacific Association of Implant Dentistry APAID and Logo.” Intervener filed an opposition against the application, and Defendant subsequently ruled in favor of the opposition and held that the registered trademark, which was approved for services certification use such as in paper publications, should be cancelled. Plaintiff then brought an administrative action, and the original court held that since the Intervenor had used APAID to hold an annual conference, applied the mark on the relevant conference data and publications, as well as using the mark for services such as arranging and convening seminars and paper publications, the cancellation of the mark was lawful under Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law. Plaintiff thus again appealed.
According to the Decision, Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law was for preventing counterfeiting by registering marks already used by others, and it is premised on the fact that the mark was actually already used by another, and interpretation of the provision should be based on preventing counterfeiting. If, however, the services provided under the name or logo used as a trademark are only for the provider’s affairs or merchandise, and the services are not provided unspecific individuals, the trademark should not be deemed to have been lawfully used even if it had actually been used to as a trademark name or logo. Therefore, if an organization only provides services to its own members and only uses such name or logo to distinguish from other organizations, but does not offer services to others at large, it is difficult to consider such use as proper trademark use.
It was further pointed out in this Decision that when Intervener convened APAID annual conferences, it had always jointly organized such events with other local organizations, and by displaying the name and logo, it is clearly for distinguishing the name and logo of APAID from those of other groups. Other than the periodical annual conferences held for its members, did Intervener use that name and logo as a trademark in provide actual labor or activities to non-members? The original decision only determined that APAID used such as its name and logo, but there was no analysis as to trademark usage, thus the original decision is in violation of the law for failure to provide adequate reasoning.
In addition, the Decision mentioned that in convening the relevant conferences, information such as conference materials and meeting agenda information must have been distributed, along with papers published at those meetings that were later made into publications. The publications so prepared are considered published incidentally to the conference, and determination of whether such constituted trademark use requires a detailed investigation. As such, the original court’s decision was remanded for further proceedings.