According to Article 36(1)(4) of the Trademark Act, a registered trademark shall not entitle the trademark owner to prohibit a third party from, using bona fide, prior to the filing date of the registered trademark, an identical or similar trademark on goods or services identical with or similar to those for which the registered trademark is protected.  However, such bona fide prior use shall be limited to "the original extent," and the owner of the registered trademark is entitled to request the senior user who uses the trademark to "add an appropriate and distinguishing indication."

 

In its Judgement No.: 109-Ming-Shang-Su-39, the Intellectual Property and Commercial Court ("IPCC") said that, the so-called "appropriate and distinguishing indication" means that the sign is objectively sufficient and necessary to distinguish between two goods or services that do not come from the same source, and to prevent consumers from mistaking the two goods as being of different but related origins.  In this case, the IPCC ruled that, the applicant (senior user) used "Speedmoto" as the mark of its online platform to sell goods and services, which is similar to the disputed trademark "Supamoto."  Although the applicant of the "Speedmoto" trademark used the "Speedmoto" trademark in good faith before the filing date of the "Supamoto" trademark, the applicant of the "Supamoto" trademark is entitled to request the applicant of the "Speedmoto" trademark to add the distinguishing mark, such as "This goods or services are not related to 'Supamoto'".  The IPCC's first-instance judgment was sustained by the second instance (see IPCC Judgment No.: 111-Ming-Shang-Shang-5). 

 

In the re-trial judgment that the IPCC rendered for this case (see IPCC Judgment No.: 112-Ming-Shang-Shang-Geng-1-3), the IPCC also said that, the so-called "original extent" set forth in Article 36(1)(4) of the Trademark Art should be evaluated on a case-by-case basis to determine the extent to which it should be limited.  The IPCC further explained that, since the categories of goods sold by the "Speedmoto" trademark applicant before and after the filing date of the "Supamoto" trademark belong to automobile and motorbike parts and components, and since the characteristics of automobile and motorcycle parts and components are that new products with new performances are constantly being introduced over time, restricting the applicant of the "Speedmoto" trademark to continue selling only the parts and components of old models of vehicles is tantamount to prohibiting he/she from using the word "Speedmoto", and thus the requirement of prior use in good faith (bona fide prior use) is virtually useless.  Therefore, the IPCC held that the "original extent" in this case shall not be limited to the "scale of original production and sale".

 

In view of the foregoing comments made by the IPCC, in determining the bona fide prior use of a trademark, whether there is any restriction on the "original extent" in terms of geographical area and scale of business, and how to add the "appropriate and distinguishing indication" requested by the trademark owner, should be considered differently depending on the type of goods.