When a trademark owner uses a registered trademark by changing its device, the registered trademark should be deemed used only if this is sufficient to cause the consumers to perceive that such changed trademark is the same as the original registered trademark according to general social constructs (Taiwan)

2019.1.17
Hsiao-Han Su

The Supreme Administrative Court rendered the 108-Pan-29 Decision of January 17, 2019 (hereinafter, the “Decision”), holding that when a trademark owner uses a registered trademark by changing its device, the registered trademark should be deemed used only if this is sufficient to cause the consumers to perceive that such changed trademark is the same as the original registered trademark according to general social constructs.

According to the facts underlying this Decision, the Appellant previously registered the “日盛集團 [meaning: Jihsun Group] JIHSUNGROUP及盛圖（彩色）[meaning: and the device of the ‘Sun’ character (in color)]” trademark as the trademark at issue for use in services such as banking and credit card issuance services.  The Intervenor subsequently applied to invalidate the registration and the invalidation was later granted by the Appellee via the original disposition as a result of its examination.  Dissatisfied, the Appellant brought this administrative action pursuant to relevant procedures.

According to this Decision, the use of a registered trademark basically requires the use of the original registered trademark in its entirety.  However, if the identity of the trademark is still maintained according to general social constructs in spite of some minor differences between the actually used trademark and the registered trademark, the registered trademark can be deemed used.  The so-called “identity” means that although the actually used trademark is slightly different in form from the registered trademark, if the trademark owner actually uses the registered trademark by making changes in terms of the size, proportion, font or text arrangement of the trademark device, the registered trademark should be deemed used only when this is sufficient to cause the consumers to perceive that such trademark is the same as the original registered trademark according to general social constructs.

It was further pointed out in this Decision that although the actual use of the trademark at issue covered part of the texts and device such as the drawing of the “Sun” character contained in the reverse-type round frame above the rectangle at the bottom of the trademark at issue, the black Chinese characters of the “JIHSUNG GROUP” and the foreign language “JIHSUNGROUP,” still this only represents the financial services provided respectively by Jihsun Bank, Jihsun Securities and Jihsun Futures, all subsidiaries of the Jihsun Goup.  This is different from the trademark at issue, which consists of the “Sun” device contained in the reverse-type round frame above the red rectangle at the bottom in combination with the black Chinese characters “日盛集團” [meaning: Jihsun Group] and the foreign language “JIHSUNGROUP” in the right and which represents that the Jihsun Group provides the designated financial services in combination with multiple enterprise entities.  Therefore, the original decision contained the following findings.  Relevant consumers cannot differentiate the sources of services provided by the Appellant or its group members simply based on the individual texts and drawings mentioned above.  However, the trademark actually used by the Appellant is obviously different from the design of the trademark at issue, and changes did actually take place with the changes not just limited to the size, proportion, font or text arrangement of the trademark device.  According to general social constructs, the identity of the trademark should be deemed lost.  Since it was considered that such finding did not violate logical or empirical rules, and that there was no legal violation such as failure to apply laws or regulations or inappropriate application of laws or regulations or insufficiency of grounds, the appeal was dismissed.