The Decision

Trademark opposition cases do not apply to the proviso of Article 60 of the Trademark Act. This shows that if a trademark does not have inherent distinctiveness and the use of evidence at the time of registration approval fails to prove that it has acquired distinctiveness, the Registrar Office should not allow it to be registered. If, after the trademark approval for registration, a third party files an opposition within 3 months from the registration published on the grounds that the trademark lacks distinctiveness, even if the situation that lack of distinctiveness no longer exists, the trademark Registrar Office shall not decide the opposition is not valid.

Accordingly, in the administrative litigation process, if the administrative court can determine the opposition is not valid based on the fact that the trademark has acquired distinctiveness after the registration was approved, this undoubtedly violates the function of the trademark opposition system in quickly correcting registration defects and strengthening the credibility of trademark registration. It is also contrary to the legislative purpose of the proviso of Article 60 of the Trademark Act to exclude the application of the opposition system. Therefore, the administrative court’s determination of whether a trademark lacks distinctiveness in a trademark opposition case should be based on the factual status when the disputed trademark is approved for registration, not when the opposition is decided by Registrar Office, nor when the conclusion of the oral argument of the trial of fact.

Ching-I Lu’s comments

1.     In this case, before the application date of the disputed trademark, the legal representative of the opposer applied to the trademark “科研市集SCIENCE RESEARCH MARKET” earlier, but the Registrar Office issued a preliminary rejection based on lack of distinctiveness. The opposer did not file any response, so its mark was rejected.

2.     When the disputed trademark “科研市集“ was under examination subsequently, Registrar Office believed that the disputed trademark had obtained acquired distinctiveness and approved the registration. After registration, the owner of the disputed trademark filed a trademark infringement lawsuit against the opposer to exclude the opposer from using the “科研市集“ trademark.

3.     Applicants should pay attention to cases like this. Many trademark applicants believe all people can legally use a trademark, which was rejected based on lack of distinctiveness. However, if other later applicants can prove to obtain acquired distinctiveness, the later applicants can still obtain trademark registration. The earlier applicant who does not hold registration may become the target of exclusion from trademark infringement action.

4.     Therefore, if the first applicant has indeed used the trademark in the market and received a preliminary rejection based on a lack of distinctiveness issued by Registrar Office, it is suggested to try to file a response to prove the acquired distinctiveness rather than to give up replying. Preconceptions for all can use this mark because lack of distinctiveness is not always correct.

5.     As for the factual status time criterion for whether a trademark lacks distinctiveness in a trademark opposition case, the Supreme Administrative Court in this case clearly stated that it is “when the disputed trademark approved for registration”. The only evidence used before registration approval can be the basis for acquired distinctiveness. The litigation party should collect the correct evidence to prove obtaining the acquired distinctiveness.