【Trademarks】A case related to the trademark “Angelina” selected by TIPO for recent years
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How to determine the scope of goods in connection with which the trademark has been put to genuine use
| Contested trademark | Registered No. 00650036 |
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Class 024 (used in former laws): Crystallized fruits; candies; biscuits; dry cakes; bread; cakes. |
【Decision No】Administrative Judgement of the Intellectual Property Court, 2019 Xing Shang Geng (Yi) Zi No.5
【Date】October 31, 2019
【Issue】 The determination of whether the goods in connection with which a registered trademark has been put to genuine use can be deemed to be identical with the designated goods of that trademark in essence.
【Relevant statutes 】Article 63.1.2 of the Trademark Act
【Decision Highlight】
- The legislative purpose of Article 63.1.2 of the Trademark Act is to prompt proprietors of the trademark rights actively using their registered trademarks to bring the function of trademarks, i.e. indicating the source of goods or services, into full play and keep maintaining their trademark rights. Nevertheless, to prevent the requirement from being too harsh, if the proprietor of the trademark rights has submitted the evidence which is enough to establish that the trademark has been put to genuine use in connection with part of the designated goods or services, other designated goods or services that are “identical in essence” can also be included in the scope of genuine use even if there is no evidence of use provided for each of them.
- The purpose of determining the “identical in essence” of goods or services is to moderately relax the burden of proof born by the proprietor of the trademark rights regarding genuine use of the registered trademark, which is different from the determination of “similar” goods or services that serves to define the protective scope of trademark rights. The two concepts shall not be confused with each other. Accordingly, directly citing the concept of“similar” goods or services to determine whether the goods or services are “identical in essence” or not shall beavoided in order to prevent the protective scope of goods or services regarding genuine use of the trademark from over expansion which may cause the deviation from the purpose of Article 63.1.2, i.e. prompting proprietors of the trademark rights to actively use their trademarks in connection with registered goods or services to maintain their trademark rights.
- The determination of whether or not different goods or services are “identical in essence” shall be based on whether the content, expertise, intended purpose, function, etc., of the goods or services are identical and whether the general public can deem them to be identical according to the commercial practice (cited from the Judgement of the Supreme Administrative Court, 2019 Pan Zi No. 133).
- In this case, both of the goods “biscuits; dry cakes; bread” and the good “cakes” are produced and provided by bakery undertakings and made from flour (rice flour) through very similar manufacturing process. For the same undertaking, these goods can be produced by existing materials at any time to provide for relevant consumers and satisfy the same needs of them. According to the general social norms and the circumstances of trade in the market, these goods are identical with each other in essence.
- The good “crystallized fruits” refers to dehydrated or frosted fruits and vegetable made of materials like plums, peaches, apricots, pears, jujubes, etc., that are candied with sugar or honey. The good “candies” is made by means of melting and boiling its main ingredient sugar at high temperatures. Comparing the goods “crystallized fruits” and “candies” with the good “cakes” in connection with which the trademark has been put to genuine use, there are differences in terms of materials, manufacturing processes or patterns of actual production and sale. Therefore, these goods are not identical with each other in essence.
【Learning Point】
In cases of revocation on the ground of non-use for three years, when determining the scope of which registered goods/service can be covered by the goods/services on which the trademark has been actually used, in current practices the scope would be the goods/services that are “identical in essence”. Such concept of “identical in essence” is different from the concept of “similar” goods/services in the practices when determining whether the use of a trademark could cause confusion; therefore, it is possible that even if the trademark is in genuine use, the revocation can still be justified on a portion of its designated goods or services.Therefore, for a new application, its designated goods or services should better be based on those the trademark is already or planned to be used on; after a trademark is registered, the proprietor should actively use the trademark on the designated goods or services, to prevent the trademark from being revoked.
In cases of revocation on the ground of non-use for three years, when determining the scope of which registered goods/service can be covered by the goods/services on which the trademark has been actually used, in current practices the scope would be the goods/services that are “identical in essence”. Such concept of “identical in essence” is different from the concept of “similar” goods/services in the practices when determining whether the use of a trademark could cause confusion; therefore, it is possible that even if the trademark is in genuine use, the revocation can still be justified on a portion of its designated goods or services.Therefore, for a new application, its designated goods or services should better be based on those the trademark is already or planned to be used on; after a trademark is registered, the proprietor should actively use the trademark on the designated goods or services, to prevent the trademark from being revoked.
