Can a Bad-Faith Trademark Registration in Taiwan Be Invalidated Without Prior Use in Taiwan?
Excerpt from the case
The petitioner for invalidation requester, acting as the Taiwan agent of a Chinese manufacturer, discovered that Taiwan Trademark Registration No. 01892076 “DONO & device” was highly similar to a trademark that had been previously used by the Chinese manufacturer. Thus, the petitioner filed an invalidation action pursuant to Article 57, paragraph 1 of the Trademark Act. Following its examination, the Taiwan Intellectual Property Office (TIPO) determined the Registration No. 01892076 “DONO & device” violated Article 30(1)(12) of the Trademark Act because it was similar to the trademark that has been used by the Chinese manufacturer. TIPO further found that the registrant had maintained a prior business connection with the manufacturer and had filed the application with the intent to imitate the earlier used mark. Consequently, TIPO rendered a decision invalidating the registration.
| Trademark registration No. 01892076 | The earlier used trademarks | |
|---|---|---|
 |  |  |
Grounds for Invalidation
Article 30(1)(12) of the Taiwan Trademark Act provides that: A trademark shall not be registered in any of the following:
Being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.
In the present case, the contested trademark and the earlier-used trademark both contained the identical letters “D, O, N, O”, and featured highly similar design elements, including. a black background, a yellow-framed plaque, and yellow-orange ribbon motifs. Furthermore, both marks were used in connection with goods designated in Class 5, giving rise to a high degree of similarity. The evidence submitted by the petitioner demonstrated that the Chinese manufacturer had used the earlier trademark prior to the filing date of Registration No. 01892076. Besides, dialogue records between the manufacturer and the registrant established that the parties had previously engaged in business dealings, evidencing both the registrant’s awareness of earlier mark and its intention to imitate the earlier used trademark.
Based on the foregoing, TIPO accepted the petitioner’s arguments and concluded that Registration No. 01892076 fell within the prohibition set forth in Article 30(1)(12). The registration was therefore invalidated.
Practical Takeaways
A noteworthy aspect of this case is that the registrant argued that manufacturer’s prior use of the trademark had occurred in China rather than Taiwan. However, TIPO clarified that the “earlier use” requirement under Article 30(1)(12) of the Trademark Act is not limited to use within Taiwan. Rather, it is sufficient to demonstrate that the trademark had been used prior to the filing date of the disputed application. The provision represents an important exception to the territoriality principle traditionally applied in Trademark law. As a result, where a third party files a trademark application in bad faith for a mark that is identical or similar to a trademark already used by another party, the owner of the earlier-used mark may still seek invalidation, even if such prior use occurred outside Taiwan.
Accordingly, trademark owners who discover that their marks have been misappropriated and registered by third parties in Taiwan should carefully assess whether evidence of prior use and prior business relationships exists, as these factors may provide a strong basis for invalidation under Article 30(1)(12) of the Taiwan Trademark Act.
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