Taiwan Update: Use of Mark on English-language Website Sufficient to Defend Revocation Claim

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Company A v Double Dynasty Co., Ltd. [2018] TIPO 107080302 (31 May 2018)

Summary

The Taiwan IP Court has maintained the Taiwan Trade Marks Office’s decision and held that Double Dynasty Co., Ltd. (“Proprietor”) was able to rely on use on a website to show the genuine use of their registered mark and thus defend a revocation claim under Article 63.1.2 of the Taiwan Trade Marks Act.

Background

The Proprietor is a distributor of machine tools which was incorporated in Taiwan in July 1987.

On 16 December 2002, the Proprietor obtained registration for the mark “mark2” (“Mark”) in relation to the goods “machines for the repair of vehicles; cranes; compressed air machines; automatic tools; pneumatic tools; oil pressure tools; air spray guns; spray guns [machines]; paste working machines ; compressed air guns for the extrusion of mastics; gluing machines; pneumatic waste oil drainers; jacks [machines]; high pressure washers” in Class 7, and has since offered the said goods for online sale through the website www.wstonewill.com as well as in a brick and mortar store.

A third party (“Applicant”) applied for revocation of the mark under Article 63.1.2 of the Taiwan Trade Marks Act on the ground of three years non-use of the mark. The Proprietor filed evidence of use of the mark in relation to the designated goods including print-outs from the website, product catalogues and invoices.

Use of Mark

There was no doubt that there had been some use of the mark in relation to the designated goods within the last three years prior to the revocation claim. However, the Applicant tried to argue that such use of the mark was not genuine use in the course of trade in Taiwan because the website was on a .com domain hosted in the United States and the only language on the website was English, while the official national language and most widely understood language in Taiwan is Mandarin Chinese.

The test for “genuine use in the course of trade in Taiwan” was that:

i) The use must be by way of real commercial exploitation of the mark in relation to the relevant goods, which include maintaining or creating an outlet for the goods or a share in that market; and

ii) The use of the mark need not be quantitatively significant for it to be deemed genuine. There is no de minimis rule. Minimal use qualifies as genuine use if it is the sort of use that is appropriate in the economic sector for preserving or creating market share for the relevant goods.

Hence, the question is if there is real commercial exploitation of the mark in the relevant economic sector.

The Court’s Decision

The Taiwan IP Court held that the Proprietor was able to rely on use on the website to demonstrate real commercial exploitation of the mark on the basis that:

i) Notwithstanding that Mandarin Chinese is Taiwan’s official national language, English is taught in schools in Taiwan and it is a language very commonly used on the official websites of companies as international trade has flourished in recent years;

ii) Customers in Taiwan are able to freely access websites on .com domains hosted in the United States;

iii) Customers in any geographic location can learn about the designated goods from the website and carry out transactions worldwide from the website (there were actual sales); and

iv) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Given that the Proprietor has distributed and created market share for its goods through the website, its use qualified as real commercial exploitation of the mark in relation to the designated goods, and such use was sufficient to defend a revocation claim under Article 63.1.2 of the Taiwan Trade Marks Act.

Comment

By recognizing use of a mark on a website written in English (a non-official language in Taiwan) and only partly targeted at consumers in Taiwan, as genuine use, this decision is indeed a welcomed development for business owners in Taiwan. It indicates that the law is catching up with the commercial reality that with e-commerce flourishing in both developed and developing countries, helped by a growing number of free online translation tools, geographical borders and language barriers matter less and less to trade. Accordingly the use of trade marks, and the recognition of such use, has to change as well.

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