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Supreme Administrative Court's Judgment 112-Shang-Zi-20 upholds Trademark proprietors may submit evidence showing use during appellate and administrative suit proceedings
The appellant filed on 5 May 2021 a non-use revocation against TM "Genesis and device" Reg. No. 01052077. The appellee failed to respond within the prescribed time frame directed by Taiwan Intellectual Property Office (TIPO). Accordingly, the TIPO rendered a decision revoking the registration of the trademark, the decision of which was later affirmed by the Petitions and Appeals Committee of Ministry of Economic Affairs. Dissatisfied, the appellee filed an administrative suit and overturned the case, with the Intellectual Property and Commercial Court (IPC Court) ruling in favor of the appellee (the "IPC Court Judgment"). Dissatisfied, the appellant appealed to the Supreme Administrative Court (SAC). The main grounds of the SAC's judgment are summarized as follows:
I. Before the trademark office renders a revocation decision, it shall notify the trademark proprietor of the revocation filing and stipulate a time frame in which the trademark proprietor must submit a response (Article 65-1 of the Trademark Act). The provision is so provided because the revocation of the registration of a trademark is essentially an administrative disposition that limits or takes away a citizen's rights. Before the trademark office renders such an administrative disposition that impinges on such rights, it shall abide by the proper legal procedures and give the party to be subject to such administrative disposition the chance to file a response and mount a defense.
According to Article 65-2 of Taiwan Trademark Act, "Where a copy of an application for revocation against a registered trademark on the grounds prescribed in Article 63-1(2) has been served on the proprietor of such trademark, such proprietor shall furnish proof of trademark use. Such registration may be revoked directly if the proprietor fails to respond within the prescribed period." The provision is so provided because the trademark proprietor should be the most knowledgeable as to whether its trademark has been put to actual use. Thus, the trademark proprietor shall have the burden of proof to show probative evidence of use.
If the trademark proprietor does not file a defense due to non-use of the trademark, the trademark office shall have no probative evidence to examine the case, thus causing difficulties in revocation proceedings. Therefore, under the aforesaid circumstances, the trademark office is authorized to directly revoke the trademark registration without having to ex officio conduct an investigation.
As the legislative purposes of Articles 65-1 and 65-2 of the Trademark Act are to safeguard the trademark proprietor's procedural interests, place the burden of proof on the trademark proprietor, and authorize the trademark office to not have to ex officio conduct an investigation, their purpose is not to limit the time frame in which the trademark proprietor may submit evidence.
II. The legislative purpose of Article 63-1(2) of the Trademark Act is to ensure that a trademark is put to use after the proprietor thereof registers it, so that its function and value can be properly demonstrate. If the trademark proprietor can submit evidence showing that its trademark was put to actual use in the three-year period before the revocation filing date, the cited article shall not be applicable to such trademark, and its registration shall not be revoked. However, if the trademark proprietor fails to submit a response during the revocation proceedings and has its trademark rights taken away solely because of its failure to respond, the proprietor would be improperly deprived of its rights and the trading order would be adversely impacted—this would be contrary to the cited article's legislative purpose.
Given the foregoing, where a trademark proprietor fails to respond within the prescribed time period during revocation proceedings, and where the trademark office proceeds to revoke the trademark's registration in accordance with Article 65-2 of the Trademark Act, the proprietor may still submit evidence showing trademark use during appellate and administrative suit proceedings. If the submitted evidence sufficiently shows no grounds of revocation, there would be "no grounds as provided in Article 63-1(2) of the Trademark Act." Under such circumstances, the trademark office's decision to revoke the trademark's registration on the basis of Article 65-2 of the Trademark Act would be unlawful.
In this case, the court determined that it could examine the various pieces of evidence submitted by the appellee to determine whether the trademark at issue had been used on the goods at issue in the three-year period before the date on which the revocation filing was made; such determination was made without error.
III. In sum, the IPC Court Judgment does not show any violations of the law as claimed by the appellant. Accordingly, the Court finds the appellant's claim that the IPC Court Judgment is unlawful and shall be rescinded to be meritless and duly rejected such claim.