The Supreme Administrative Court rendered the 107-Pan-673 Decision of November 15, 2017 (hereinafter, the “Decision”), holding that the trademark right of an unregistered trademark is not protected even though it is used earlier; however, the holder of the earlier used trademark is exceptionally granted with a remedy right to avoid trademark squatting conducted by plagiarizing and imitating a trademark created by another person.
The Appellee in this matter applied to Appellant Intellectual Property Office (hereinafter, the “IPO”) to register the “Weihsin” trademark, which was designated for using on “agency services for domestic and overseas application of intellectual property rights and for the handling of relevant matters” under Class 45 of the Goods and Services Classification under Article 19 of the Enforcement Rules of the Trademark Law effective at that time, with an approval granted to announce the trademark as the trademark at issue. Appellant A or Weihsin Law Firm (hereinafter, “Appellant A”) subsequently filed an opposition against the trademark at issue on the ground that the law firm had used the “Weihsin” trademark earlier (hereinafter, the “Opposing Trademark”). Appellant IPO subsequently rendered a disposition (hereinafter, the “Original Disposition”), according to its examination, to cancel the registration for a portion of the services but reject the opposition to the registration for the remaining services of “looking for people and conducting investigation,” for which the trademark at issue was designated. Dissatisfied with the portion of the disposition that upheld the opposition, the Appellee brought an administrative action pursuant to applicable procedures. After a decision was rendered to set aside the portion of the Original Disposition which upheld the opposition and the decision on administrative appeal, Appellant A was dissatisfied and filed this appeal.
This Decision first pointed out that since the word “Weihsin” is not only an existing term in Chinese history and culture but also was used to name several incidents in modern history, not to mention that the Appellee used to be strongly connected with Japan. In reference to the materials from the Liberty Times Net produced by the Appellee, it is sufficient to conclude that the Appellee had used the trademark at issue for its own reasons, and that the Appellee had not willfully imitated and plagiarized the Opposing Trademark. Therefore, the original trial court rendered a decision by determining facts based on logical and evidentiary rules and clearly stated its fact-finding basis and the reasons for its conviction without legal violations or insufficiency of grounds due to failure to apply relevant laws or regulations or application of inappropriate laws or regulations.
It was further pointed out in this Decision that the first-to-register doctrine rather than first-to-use doctrine is adopted under the Trademark Law in Taiwan. Therefore, to exclude any competitive use by others, it is required by law to apply to the competent authority for registration. The trademark right of an unregistered trademark is basically not protected even if it is used earlier. To avoid trademark squatting conducted by plagiarizing or imitating a trademark or mark created by another person, Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law as amended on May 5, 1997 exceptionally grants a remedy to the holder of an earlier used trademark, who may exercise the right of revocation application, under the principle of good faith under the Civil Code to prevent confusions to the consumers and unfair competition. If an earlier used trademark has a significant reputation and is more likely to be known to the competitors or relevant consumers, although a finding may be made in favor of the earlier used trademark when it is determined if “an applicant has learned about the existence of another person’s trademark due to contractual or geographical relations, business transactions or other relations with such person,” still the original decision concluded as follows. Based on the competitive relations with business operators in the same industry in the future, it could be reasonably inferred in this matter that the Appellee had learned about the existence of the Opposing Trademark before the Appellee applied to register the trademark at issue. Since a finding favorable to the Appellant was made based on such fact, the Appellant should not dispute about this anymore. Appellant A’s contention that there was insufficiency of grounds in this portion of the original decision was certainly unacceptable, and the appeal was rejected on such basis.