#To apply for a trademark before marketing is absolutely true! This was also a dispute from the failure to register a trademark in a timely time.
Taipei well-known spicy hot pot restaurant "DingWang" was registered as a trademark by founder's nephew Mr. Tsau in March 2015.
The founder filed an objection with using it before others, and the IPO revoked the registration of the trademark No. 01796391 "DingWang".
Mr. Tsau dissatisfied with the disposition and appealed to the Supreme Administrative Court.
Supreme Administrative Court finally judged Mr. Tsau to lose the lawsuit because he registered the trademark preemptively
Let's take a look.
What is the trademark "first to use"?
Trademark "first to use" means that before someone else applies for a registered trademark, a trademark similar to someone else's registration has been used on similar goods or services, and has a certain popularity. In this case, it can be claimed continue to use with the trademark "first to use".
However, trademark "first to use" must not only meets Trademark Law Article 5, but also certifies that it be used in "transaction process". And "It can be recognized by relevant consumers and meets the habits of general business transaction."
Trademark Law Article 5
Use of trademark
“Use of a trademark” means any of the following act, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark:
(1) to apply a trademark to goods or packaging or containers thereof;
(2) to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
(3) to apply a trademark to articles relating to the provision of services; or
(4) to apply a trademark to commercial documents or advertisements relating to goods or services.
The preceding paragraph shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media.
Ding Wangone Spicy Pot has been in existence for more than 25 years since its establishment in 1992. It has gained a certain popularity through newspaper and magazine reports.
Therefore, the founder of Ding Wangone Spicy Pot may advocate that he had used the trademark before any others and filed objections.
Although Taiwan Trademark Law adopts first-to-file, in principle, trademarks that had be used first but not be registered were not be protected. However, in order to avoid unfair competition related to register trademark preemptively, trademarks that had be used first but not registered would be protected by Trademark Law Article 30, paragraph 1, subparagraph 12 “prevention of registering trademark preemptively”.
Trademark Law Article 30 paragraph 1, subparagraph 12:
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, unless the proprietor of the said earlier used trademark consents to the application.
Mr. Tsau was invited to join DingWang in 1996. In 2015, without the consent of the founder, he first applied for the registration of the trademark "DingWang". In June of the same year, "Old DingWang Spicy Pot" was opened nearby. It was attempt to climb goodwill to the "DingWang Spicy Pot", causing confusion and isunderstanding among consumers. Obviously, there was a suspicion of malicious imitation. The registration of the trademark "DingWang" was enough to cause the public to confuse and misrecognize, or to reduce distinctiveness and reputation of trademark. Absolutely, there were violations of Trademark Law Article 30, paragraph 1, subparagraph 11and 12.
However, in his reply, Mr. Tsau cited "Ding Wangone" as a registered trademark applied by the founder of Ding Wangone Spicy Pot: Mr. Chen in August 1998. He applied for the revocation of Mr. Chen's trademark before re-applying for the registration of "DingWang". He didn't apply trademark preemptively.
In response to this, the Supreme Administrative Court emphasized that: “another person’s earlier used trademark” in Article 30, paragraph 1, subparagraph 12 of Trademark Law means that the use of the trademark was earlier than the date of application for disputed trademark. Therefore, maliciously imitated the trademark of first-to-use and apply for registration, might not exclude the paragraph with the trademark had been used or registered by a third party.
Finally, although DingWang successfully prevented trademark registering preemptively. The time and effort were difficult to evaluate. And not every trademark could be so lucky.
#Gold Keen Protect your intelligence. Let’s protect your brand name together!
#Let us take your brand to the whole world
News source：http://bit.ly/32dngQP
Supreme Administrative Court judgment No. 602 in 2019：https://www.lawsq.com/book/最高行政法院(行政)商標異議/45828846552
