Formosa Transnational - Taiwan
Articles 63 and 64 of the Taiwanese Trademark Act stipulate that “the Registrar’s Office shall, ex officio or upon receipt of an application, revoke the registration of a trademark if such trademark has become a generic mark or term, or a common shape for the identified goods or services”. Thus, if a third party can prove that a mark has become a generic term for the identified goods or services, it can request the revocation of the mark. However, as the type, frequency and duration of trademark use are often changing, when, and under what criteria, can it be determined that a trademark has become generic?
Recently, the Supreme Administrative Court issued a judgment (106 pan zi 656) holding that the decision of whether a mark is generic should take into account evidence only up until the time that the revocation application was filed. The Supreme Administrative Court stated there will likely be an increase in the consumers and industries using the mark as a generic term while the litigation is pending, which may exaggerate the generic nature of the mark, especially where the proceedings are delayed. This is advantageous for the revocation applicant. On the other hand, once a revocation application has been filed, the trademark owner may attempt to strengthen its trademark use to restore its distinctiveness, which may be sufficient to overcome the assertion that the trademark has become generic. This is advantageous for the trademark owner.
Moreover, delaying the decision of whether a mark is generic may make proving the claim more difficult, which will undermine the previous evidence submitted by the revocation applicant. Thus, events that occur subsequent to the revocation application filing date should not be considered in a judgment, whether the facts are advantageous or disadvantageous to the trademark owner.
In this case, the applicant applied to revoke the proposed mark, 蠍尾刷 (Scorpion Tail brush) by asserting that it had become a generic term for a brush used in the beauty and massage industries. However, most of the evidence submitted by the revocation applicant came after the filing date of the application; the court thus disregarded the evidence and held that the mark should not be revoked.
The Supreme Administrative Court also held that the revocation applicant must prove that the majority of consumers have used the mark as a generic term and that they do not consider the mark as an indicator for the source of the goods. Thus, the IP Court was correct in holding that the fact that the targeted mark is used to indicate a type of brush in the beauty and massage industries is insufficient to presume that the targeted mark has became a generic term for such brush.
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