A joint trademark may be used, but may not be licensed to others for use

【QUESTION】

If a joint owner of a trademark uses the jointly owned trademark, does he or she need the other joint owner's consent?

【The Decision】

Any license, sublicense, transfer, abandonment, or creation of a pledge on the rights in a jointly owned trademark, as well as any transfer or creation of a pledge on a share in a jointly owned trademark, requires the consent of all joint proprietors, as expressly stated in Article 46, Paragraph 1 of the Trademark Act. Therefore, the consent of all joint owners is required only when conducting a license, sublicense, transfer, abandonment, pledge, or transfer or pledge of a portion of a jointly owned trademark.

In a separate trademark determination case before this court, the disputed trademark was determined to be jointly owned by the plaintiff and Hantao Company. On August 25, 2023, Hantao Company changed its name to the defendant, Huasheng Drinking Water. Huasheng Drinking Water is one of the joint owners of the disputed trademark. According to the relevant provisions of the Trademark Act, except in circumstances requiring the consent of all joint owners, the defendant, Huasheng Drinking Water, has the right to use the disputed trademark. Furthermore, the plaintiff does not dispute that Evidence 4 originates from the defendant Huasheng Water Resources' website, which states that the website belongs to its subsidiary, the defendant Huasheng Drinking Water. Therefore, the evidence presented by the plaintiff cannot prove that the defendant company has engaged in any conduct described in Article 68, Paragraph 1 of the Trademark Law. As noted above, even if the plaintiff's evidence is accurate, the defendant Huasheng Drinking Water, as a joint owner of the disputed trademark, is entitled to use it. Consequently, there is no infringement of the plaintiff's trademark rights. Thus, the plaintiff's claim lacks a valid basis and is difficult to accept.

【Ching-I Lu’s Comment】

1.     In practice, trademark applicants often ask whether there will be any issues if they apply for a trademark jointly owned with others and use the trademark in the future. The judgment in this case offers a clear explanation

2.     This judgment clearly establishes that, in cases of joint ownership of a trademark, any proposed license, sublicense, transfer, abandonment, pledge, or transfer or pledge of a portion thereof requires the consent of all joint owners, pursuant to Article 46, Paragraph 1 of the Trademark Law. However, the act of a joint owner simply using the trademark does not fall within the scope of requiring consent from all joint owners under Article 46 of the Trademark Law. Therefore, each joint owner has the right to use the jointly owned trademark without the consent of the other joint owners.

3.     A similar dispute arose in the “惡魔雞排(Devil Chicken Cutlet)" trademark case. The Intellectual Property Court's Civil Judgment 107 Minshashan No. 12 clarified that, based on a partnership, one of the joint owners of a trademark holds joint ownership rights to the trademark. According to Article 46, Paragraph 1 of the Trademark Act, they may use the joint trademark. However, without the consent of all joint owners, a joint owner may not license others to use the joint trademark. Therefore, licensing others to use the joint trademark constitutes an infringement of the disputed trademark. Conversely, a joint owner's personal use of the joint trademark does not constitute infringement.

4.     Moreover, it is important to pay close attention to the trademark licensee, especially franchisees who wish to join another brand. They should be fully aware of the ownership of the franchisor's trademark rights. If multiple parties jointly own the franchisor's trademark, the franchisee acts as the trademark licensee. If the franchisee obtains a license from only one of the joint trademark owners but does not secure permission from all joint owners before using the trademark, they may face trademark infringement claims from the other joint owners.