Even if the identity is not affected, a trademark altered by the owner in different forms shall still be revoked.

【QUESTION】

If a trademark owner alters the use of a registered trademark device, but the

Alteration does not cause it to lose its identity according to general social understanding. Can the trademark still be revoked under Article 63, Paragraph 1, Subparagraph 1 of the Trademark Act concerning alteration in use?

【The Decision】

1.        According to Article 63, Paragraph 1, Subparagraph 1 of the Trademark Act, "If a trademark is registered and one of the following circumstances exists, the trademark authority shall, ex officio or upon application, revoke its registration: The trademark owner alters the trademark or adds an appendix, thereby causing it to be identical or similar to a registered trademark used by another party on the same or similar goods or services, and there is a risk of confusion among relevant consumers." The conditions for applying to revoke a trademark registration under this paragraph are twofold: 1. The trademark owner alters the trademark or adds an appendix after registration; 2. The altered or appended trademark is identical to or similar to a registered trademark used by another party on the same or similar goods or services, creating a risk of confusion among relevant consumers. The purpose of this clause is to impose on trademark owners the obligation to use their registered trademarks lawfully after registration. This prevents improper use by trademark owners that results in identical or similar trademarks being used by others on the same or similar goods or services, which could confuse relevant consumers about the source or manufacturer of the goods, thereby disrupting fair market competition. Since this clause prohibits the abuse of trademarks, it applies only when changes made by the trademark owner to the trademark, or the addition of affixes, can be interpreted as trademark use.

2.        Furthermore, Article 64 of the Trademark Act stipulates: "If a trademark owner's actual use of a trademark differs from the registered trademark but does not lose its identity according to general social perception, it shall be deemed that the registered trademark has been used." This provision addresses whether the trademark owner has genuinely used the registered trademark and whether such use is sufficient for domestic consumers to recognize it as the registered trademark, thereby conforming to the trademark use requirements set forth in Article 5 of the Trademark Act. This differs from the regulatory purpose of Article 63, Paragraph 1, Subparagraph 1 of the same Act. Therefore, the application of Article 63, Paragraph 1, Subparagraph 1 cannot be restricted on the grounds that the trademark owner's alteration or addition of affixes to the trademark constitutes identity with the registered trademark.

3.        Regardless of whether the disputed design used by the appellant was identical to its registered trademark, this does not preclude the application of Article 63, Paragraph 1, Subparagraph 1 of the same Act. The original judgment's finding that the appellant had altered the trademark or added additions after its registration is not in violation of the law.

【Ching-I Lu’s comment】

1.        This judgment centers on two main points. First, Article 63, Paragraph 1, Subparagraph 1 of the Trademark Act states that "any action that alters or adds an appendix to a trademark, making it identical or similar to a registered trademark used by another party on the same or similar goods or services, and potentially causing confusion among relevant consumers," must be applied only when it constitutes "trademark use". The Supreme Administrative Court has clarified that the purpose of this provision is to prevent trademark owners from misusing trademarks after registration. Such misuse could confuse consumers regarding the source or manufacturer of the goods being represented, ultimately affecting fair market competition. Therefore, it applies only when changes made by the trademark owner to the trademark, or the addition of affixes, can be interpreted as trademark use.

Another key point of this judgment is that even if the trademark owner's alteration of trademark use is considered to fall within the scope of "identity" with the original registered trademark, it does not prevent the determination of grounds for revocation under Article 63, Paragraph 1, Subparagraph 1 of the Trademark Act regarding alteration of use.

2.        "Identity" is a frequently discussed issue when applying the grounds for revocation under Article 63, Paragraph 1, Subparagraph 2 of the Trademark Act: "If there is no justifiable reason for non-use or continued suspension of use for more than three years." In the event that company graphic designers alter the original registered trademark design when creating advertising copy, does the altered design constitute use of the original registered trademark? According to Article 64 of the Trademark Act: "If a trademark is used by a trademark owner in a way that differs from the registered trademark, but according to general social perception, the trademark remains identifiable, it shall be deemed that the trademark owner has used the registered trademark." Therefore, if the altered design does not lose its identity according to general social perception, it can be concluded that the original trademark has been used by the trademark owner, and the trademark will not be revoked due to three consecutive years of non-use.

3.        If a trademark owner alters or adds to their trademark while using it in a way that causes confusion, but the general public still recognizes the trademark's identity, can they argue that this does not justify revocation under Article 63, Paragraph 1, Subparagraph 1 of the Trademark Act because their use maintains the trademark's identity?

3.1.The Supreme Administrative Court clarified in this case that Article 64 of the Trademark Act addresses whether a trademark owner has genuinely used the registered trademark and whether this use is sufficient for domestic consumers to recognize it as a registered trademark. This regulation aligns with Article 5 of the Trademark Act.

3.2.In contrast, Article 63, Paragraph 1, Subparagraph 1 of the same Act aims to address the effects on fair market competition. Consequently, the application of Article 63, Paragraph 1, Subparagraph 1 cannot be limited by the trademark owner's own alterations or additions to the trademark's use, which may indicate an identity with the registered trademark.

3.3.In other words, even if the trademark owner alters the design of their trademark, it can still maintain its identity as understood by the general public. When the trademark is challenged for revocation under Article 63, Paragraph 1, Subparagraph 2 of the Trademark Act due to non-use for three consecutive years, it can be considered that the trademark has been legally used and therefore will not be revoked.

3.4.However, if the altered trademark design is sufficient to determine that the trademark owner has "altered the trademark or added elements that make it identical or similar to a registered trademark used by others for the same or similar goods or services," and this creates a risk of confusion among relevant consumers, then the original registered trademark may still serve as grounds for revocation under Article 63, Paragraph 1, Subparagraph 1, and should be revoked.

4.        In the past, similar disputes have arisen in practice. When a trademark owner alters the registered trademark design, but the alteration does not lose its identity according to general social understanding, may it still constitute trademark infringement?

The Civil Judgment No. 30 of 2016 from the Intellectual Property Court clearly states that even if a trademark owner uses their trademark in an identical manner, this does not prevent the determination of trademark infringement. This is primarily because the issue of trademark identity revolves around "trademark maintaining use," which focuses on whether the trademark use aligns with standard commercial transaction practices. On the other hand, the essence of trademark infringement is concerned with the risk of consumer confusion. If there is a risk of confusion among relevant consumers, it may be considered "trademark infringement use." Therefore, even if the altered use of a trademark is identical to the original registered trademark, it can still lead to a finding of infringement.