【Trademark Revocation 1】「Angelina Design Graphic」 trademark revocation event

More and more people know that they need to apply for trademarks to protect their intellectual property. But how to use the trademark after obtaining the trademark right? What could we do when face the revocation?

December 6, 1993, SEVEN FRIENDS INDUSTRIAL CO.,LTD.  (plaintiff) designated the "Angelina Design Graphic" (disputed trademark) trademark as class 24：crystallized fruits, candy, biscuits, muesli, bread and cakes and applied through IPO (defendant) which according to Trademark Law Enforcement Rules 24 at that time. The French company Angelina Co., Ltd. applied for the revocation of its registration on September 25, 2014 with the "Angelina Design Graphic" violated of Trademark Law Article 63, paragraph 1, subparagraph 2.

After examining by the defendant, revocation judgment No. L01030449 was the judgment of the disputed trademark on October 8, 2015. The disputed trademark should be revoked. The plaintiff was dissatisfied and filed an appeal. On February 3, 2016, MOEA rejected the appeal with the judgment No. 10506301020. The plaintiff was dissatisfied, and filed an administrative lawsuit to MOEA. After MOEA judged to revoke the appeal judgement and the original judgement. The defendant and the participant were dissatisfied and filed an appeal. According to the Judgment No. 133 of the Supreme Administrative Court in 2019, it was believed that the disputed trademark was truly used in the "cakes" goods within three years before it be revoked.

Question:
The plaintiff used the disputed trademark in the "cakes" goods within 3 years before the participant applying for revocation (September 25, 2014). Could the goods "crystallized fruits, candy, biscuits, muesli and bread" be determined as actual use?

The purpose of the Trademark Law Article 63, paragraph 1, subparagraph 2 is to encourage trademark owners to actively use their trademarks after registering them. In order to give full play to the trademark's function of identifying the source of goods or services. It can continue to maintain the trademark rights. However, in order to avoid being too harsh, if the trademark owner has provided evidence of using part of goods or services, for other goods or services that are "same in nature", although no proof is provided, they can also be determined as actual use.

For the so-called "same in nature" goods or services, you can refer to the goods or services class by Taiwan IPO as 6 codes of goods or services (for groups not classified to 6 codes, the 4 codes shall prevail).  In principle, the goods and services name under the 6-code goods and service group item can be regarded as the same nature.

Also, according to "whether the goods actually used by the trademark are the same as those originally designated for use, we should judge whether the two goods have the same use, function and purpose according to the social values. If the two goods have an inclusive, overlapping, or equivalent relationship, they may also being considered that the goods actually used by their trademarks are consistent with the goods designated for use." Based on the above, the Court believes that the judgment of whether it is "same in nature" goods or services should base on the social values and the situation of market transaction. The classes of goods or services are to facilitate administrative management and search. Whether the goods or services are the same or the same nature is not absolutely restricted by these classes.
 

Based on the above, Gold Keen suggests: after obtaining the trademark right, it can be used for 10 years. But that isn't mean everything will be fine after registering.

First,

in "Trademark Use Way", the trademark should be used as the same when it applied. Do not easily change the way of use to avoid being revoked by others.