【Trademarks】Time Point for Trademark Owner to Submit Proof of Use in Cases of Trademark Revocation
Case 1:
Company A owns Trademark A for use in computer program designing service and it has been registered for three years. Company B applies for revocation of this trademark based on the cause that the trademark has not been used for three years as per Subparagraph 2, Paragraph 1, Article 63 of the Trademark Act, and Company A fails to submit proof of use during the stage of review by the Taiwan Intellectual Property Office (TIPO). Will the registered trademark of Company A be canceled?
➢Analysis:
Based on the provisions of Paragraph 2, Article 65 of the Trademark Act: “in case of any circumstance set out in Subparagraph 2, Paragraph 1, Article 63 of the Trademark Act, the trademark owner is obliged to provide proof of use upon receipt of the request for submission of defense; Failure to submit defense within the given time limit shall result in direct revocation of the trademark registration”. Because the claim of Company B that Trademark A “has not been used” is “negative fact”, and “negative fact” requires Company B to bear the full burden of proof, i.e., Company B needs to prove that Company A has truly not been using Trademark A. This will result in difficulties in providing evidence. Moreover, only the trademark owner knows if the trademark is truly in use or not. Therefore, the act provides that the trademark owner shall submit data of proof that the trademark is truly in use, and in case Company A fails to submit proof of use of Trademark A, the TIPO can directly cancel the trademark registration without the obligation to investigate if Company A has been actually using Trademark A. Hence, if Company A fails to submit proof of use of Trademark A during the stage of review at the TIPO, its registered trademark may be canceled.
Case 2: Continuing from the above case, if Company A files an appeal or an administrative litigation after the TIPO cancels the registration of Trademark A, and submits proof of use during the stage of appeal or administrative litigation, and if such proof can support true use of Trademark A, shall such proof of use be considered and shall the original decision be revoked?
➢Analysis:
As stipulated in Paragraph 2, Article 65 of the Trademark Act, if the trademark owner fails to submit proof of use during the procedure for revocation of the trademark, the TIPO can make a decision to cancel the trademark. However, does this mean that once the trademark is canceled due to failure of submitting proof of use during the stage of review by the TIPO to defend against a third party’s application to cancel the registration, the trademark owner cannot further submit proof of use of the trademark during subsequent appeal or administrative litigation? Based on the justification of Intellectual Property and Commercial Court 2022 Hsing-Shang-Su-Tze No. 20 Administrative Judgment, the provision of Paragraph 2, Article 65 of the Trademark Act only stipulates that the TIPO can directly cancel the trademark registration in case the trademark owner fails to defend within the time limit after receiving notice from the TIPO, but does not indicate that the trademark owner cannot further submit evidence to prove fact of use of the trademark during subsequent appeal or administrative litigation after revocation of trademark registration by the TIPO. Moreover, the legislative purpose of Subparagraph 2, Paragraph 1, Article 63 of the Trademark Act is to ensure actual use of the trademark after registration by the trademark owner. If the trademark owner can provide evidence to prove that the trademark has been truly used within three years prior to the application for revocation, it is not the subject of this paragraph and the trademark registration should not be canceled. The effects of abridgment of rights due to failure to defend during the revocation stage would constitute improper deprival of the rights of the trademark owner and damage to the fair transaction order, which goes against the legislative purpose of the provision (referring to Supreme Administrative Court 2023 Shang-Tze No. 20 Judgment). Therefore, if Company A fails to defend during the revocation stage and the TIPO makes a decision to cancel the registration, Company A can still submit proof of use during subsequent appeal or administrative litigation, and the court shall also consider such data of proof when judging if Trademark A has truly been used. If such evidence can prove actual use of Trademark A, the original decision shall be rescinded.
Conclusion In practice, in cases of trademark revocation due to non-use for three consecutive years, it is considered that even if no evidence is presented during the stage of review at the TIPO, evidence of use can still be submitted during the subsequent appeal or administrative litigation. The trademark owner will not lose its right during the appeal or administrative litigation simply because it fails to submit proof of use during the stage of review by the TIPO. However, Article 65 of the Trademark Act not only provides procedural interest to the trademark owner, but also obliges the trademark owner to bear the burden of proof. Therefore, when a registered trademark is subject to a third party’s application for revocation, and the trademark owner has been truly using the trademark, the trademark owner shall actively submit proof of use to avoid revocation of the registered trademark by the TIPO. Particularly, in such cases of trademark revocation, if the trademark owner fails to submit proof of use of the trademark in time, and gives up the right to defend during the stage of review by the TIPO, and only presents evidence during the appeal or administrative litigation, it may be accused for delaying the submission of proof to fabricate evidence before the appeal or administrative litigation. Therefore, it is advised that the trademark owner shall regularly maintain proof of use of the trademark, and when the registered trademark is applied for revocation, the trademark owner shall submit proof of use within the officially prescribed time limit, so as to protect its own trademark rights.
