【Decision No】Administrative Judgement of the Intellectual Property Court,
2020 Xing Shang Su Zi No.104
【Date】January 28, 2021
【Issue】When it comes to the determination of the evidence of genuine use, whether the “actual transactions” raised to establish the registered trademark has been put to genuine use shall be limited to those take place in Taiwan.
【Relevant statutes】Articles 5 and 63.1.2 of the Trademark Act
【Decision Highlight】
 1.  The plaintiff’s evidence is enough to establish that it had promoted the service related to its “東急” department store operated in Japan through the international tourism exposition held in Taiwan within 3 years before the date that the revocation was filed.
  2.  To ensure that it can be deemed to be the genuine use of a trademark, in addition to meeting the requirement of “use in the course of trade” set out in Article 5 of the Trademark Act, more importance is attached to whether the trademark is continuously used through economically meaningful ways to create or maintain the sales market in the relevant territory. If the proprietor merely promotes the image of its trademark without conducting all or part of the transactions in Taiwan, there will be no chance for domestic consumers to have transactions in connection with any goods or services identified by the trademark in Taiwan. Consequently, the trademark will be incapable of fulfilling the economic function of creating the market or sales channels for its goods or services in Taiwan, and it also means that the trademark will obviously lose its value. Namely, it is not enough to constitute genuine use of a trademark.
  3.  The plaintiff didn’t operate any department store in Taiwan, the coupons or flyers sent in the tourism exposition were no more than advertising activities. Taking into account the facts that the place where the service and overall transactions related to consuming the service are provided or conducted in Japan, no economic activities of department store occurred in Taiwan, such use of the trademark cannot be deemed to be genuine use. In conclusion, it is not enough to establish that the contested trademark has been legitimately put to genuine use in connection with the service “department store” designated by the plaintiff.
 
[Learning point]
　　In accordance with the Taiwanese Trademark Act, the trademark rights are territorial, and the “genuine use” of a trademark is necessary, which means that a trademark should be used in an economically meaningful way; hence, if the proprietor merely promotes the image of its trademark, but the actual transactions have all occurred at locations outside Taiwan, it is possible that the trademark would not be deemed being used in Taiwan. Hence, after a trademark is registered, a trademark proprietor should sell the goods or provide services in Taiwan, for the use of trademark in Taiwan to be recognized.