INTA Asia Roundtable in Taipei: IP Court Decisions on Evidence of Use

Associates Betty Chen and Jesimy Yu  participated in a Taipei INTA Roundtable co-hosted by the INTA Asia Roundtables Project Team and St. Island International Patent & Law Office last week. The topic of this year’s Taipei Roundtable was “Case Studies on Evidence of Use.”
Focusing primarily on decisions by the Taiwan Intellectual Property Court in the last three years, practitioners from leading Taipei law firms enjoyed a very substantive and spirited discussion of whether the Court has decided on standards for proof of use.
Statutory Background
Taiwan’s Trademark Act authorizes the Taiwan Intellectual Property Office (TIPO) to cancel a trademark registration if the owner of the mark fails to use the mark for three years. § 63.
To prevent cancellation, the owner of the mark can raise a defense of use. § 65. To prove use, the owner must show that he

  1. used  the mark on goods or packaging
  2. possessed, displayed, sold, exported, or imported goods bearing the mark on the goods or packaging
  3. used the trademark on an item related to the provision of services; or
  4. used of the trademark in a commercial document or advertisement related to goods or services.

Moreover, he must adduce facts showing that this use was

  1. for the purpose of marketing; and
  2. suffices to cause relevant consumers to recognize the trademark as such. § 5.

Finally, use must be “consistent with the conventions of commerce and trade.” § 36.
But what facts will the courts and the TIPO allow to to prove use? And what does it mean for use to be “consistent with the conventions of commerce and trade.”?
For example, in a 2010 case, the Court held that a trademark owner did not use his registered trademark when he published an advertisement seeking distributors in which he listed the numbers of his trademark registrations and the goods that they designated. DanjaqLLC v. Taiwan Intellectual Property Office. IPC Civil Decision No. 2010 Xing-Shang-Su-113.
In a 2009 case however, the Court held that when a trademark owner published an job advertisement that contained the goods and/or the representation (tuyang), it could cause job seekers or ordinary consumers to recognize the mark as indicating the source of designated goods and that the advertisement was also general enough to serve a secondary marketing purpose. Kao Corporation v. Taiwan Intellectual Property Office. IPC Civil Decision No. 2009 Xing-Shang-Su-64.
What about an advertisement in a foreign-language magazine whose target consumers reside outside of Taiwan? If that magazine is imported into Taiwan, can the content of the magazine be introduced as use in Taiwan? In a 2010 decision, the Court disallowed this evidence of use. Huanqiu Shenghuo Shiye Co. Ltd. v. Taiwan Intellectual Property Office. IPC Civil Decision No. 2010 Xing-Shang-Su-111.
Winkler Partners and the INTA Asia Roundtables Project Team co-hosted a roundtable events  in 2010 and 2011 on  “The Future of Non-Traditional Marks in Taiwan”  and “Trademark Protection at the Border – Working with Customs” respectively.
Note: the English translations from the Trademark Act here are from Winkler Partners’ in-house translation of the Trademark Act (2011). Winkler Partners will publish its translation here later this week for use by INTA members.  The 2011 amendments to the Act will take effect on 1 July.