The fact finding in a trademark revocation case should be based on the timing of the revocation application (Taiwan)

Jane Tsai

The Supreme Administrative Court rendered the 106-Pan-656 Decision of November 30, 2017 (hereinafter, the “Decision”), holding that the regulatory objective suggests that a trademark revocation case should rely on the timing of revocation application as its factual basis timing.  In addition, to consider the protection of the vested rights and interests of the trademark owner and the procedural interest of the revocation applicant, a trademark revocation case should also rely on the timing of the revocation application as its factual basis timing.

According to the facts underlying this Decision, the Intervenor, i.e., the trademark owner, applied to register “Scorpion Brush,” which was registered as the trademark at issue.  The Plaintiff subsequently applied to revoke the trademark on the ground that the use of a “scorpion brush” as a body massage brush has become generic.  The Defendant (the Intellectual Property Office) subsequently rendered the original disposition to revoke the trademark at issue.  The Intervenor filed administrative appeal. As a result, the Petitions and Appeals Committee of the Ministry of Economic Affairs rendered a decision on administrative appeal which held that “the disposition rendered by the original disposition agency to revoke the registration of the part of the trademark at issue (No. 1175440 ‘Scorpion Brush” Trademark) which was designated for use on ‘body massage bushes’ should be set aside, and the original disposition agency shall render another legally appropriate disposition with the rest of the administrative appeal dismissed.”    Dissatisfied, the revocation applicant (i.e., the Plaintiff) brought this administrative action.  The original trial court ruled against the Plaintiff.  Out of dissatisfaction, the Plaintiff filed this appeal.

According to this Decision, Article 66 of the Trademark Law specifically provides that with respect to grounds for a revocation against a registered trademark, the provisions in effect at the time of the revocation application shall govern.  However, the above provision pertains to the statutory basis timing, not the factual basis timing basis for revocation cases, about which the law is silent.    With respect to the revocation of a genericized trademark, although more and more consumers and operators will indeed use the genericized trademark as goods names with the progression of time and litigation, still the postponement of the factual basis timing makes the fact of trademark genericization more pronounced, which is detrimental to the trademark owner but favorable to the revocation applicant.  On the other hand, however, genericization will bring to the attention of the trademark owner that the trademark will be subject to revocation application due to genericization.  Therefore, the trademark owner will definitely enhance the trademark use, and this may instead revive the trademark.To wit, the trademark’s distinctiveness is restored due to its use, while the postponement of the factual basistiming will eliminate the factual genericization of the trademark, which is favorable to the trademark owner but unfavorable to the revocation applicant.  Application to postpone the factual basis timing of revocation merely causes uncertainties concerning the assertions raised and the substantiation procedure.  Pursuant to the principle of procedural economy or from the perspective of the effectiveness in remedies and balance of the interest between both parties, the timing of revocation application should certainly be the timing of the factual basis. As for subsequent facts, they shall not be relied on for determination during adjudication, whether they are favorable or unfavorable to the trademark owner.

Therefore, it was further concluded in this Decision that since the original decision which held that the timing of the factual basis of the relevant supplemental evidence produced by the Plaintiff during the litigation was revocation application on August 3, 2011, which should be the start point of examination, was not inappropriate, the Plaintiff’s appeal was dismissed.