Case exposes vulnerability of marks registered prior to class category changes

During the lifetime of a trademark, it is not uncommon for the classification of the goods and services designated in the registration to be revised by the relevant IP office; sometimes even the definition of a generic term may change. This raises two questions: does the scope of protection also change in such cases? And, will such a change affect the registrant’s evidence of use in a non-use cancellation action? In a recent decision, the Supreme Administrative Court (SAC) addressed these issues, finding in the registrant’s favour (Hsieh v Regal Scan Tech Co Ltd, 110 Shang 51, SAC, January 2022).  

A non-use cancellation action was filed in 2019 against a mark covering “computer hardware, computer software, calculators, cash registers”. In response, the registrant submitted evidence of use of the mark on barcode printers, asserting that this category falls within the concept of computer hardware. However, the Taiwan IP Office disagreed, because, among other grounds, barcode printer and computer hardware are categorised in different sub-classes in the current Manual of Classification of Goods and Services issued by the office, with barcode printers belonging to sub-class 091703 titled ‘computer application products’, while computer hardware belongs to sub-class 091701. Hence, the office held that the mark was not proved to have been used for computer hardware and the registration should be cancelled. 

The registrant appealed the office’s ruling to the Board of Appeals, which partially reversed the decision. The board found that at the time the mark was registered in 2004, Class 9 had fewer sub-classes than it does today. At that time, barcode printer was classified under sub-class 0917 which was simply named ‘computer hardware’ and had no sub-classes. Further, the board held that the functions and sales channels of barcode printers are not that different from regular printers and other computer hardware devices; so it is only natural for consumers to consider barcode printers as a denomination of computer hardware.

The case was appealed to the IP and Commercial Court, which concurred with the board’s opinion, and then finally to the SAC. With an expressed intent to protect a good-faith registration, the SAC indicated that, although sub-class 0917 was divided into 091701, 091702 and 091703, this revision was made after the registration of the disputed mark. So, as long as the mark has been genuinely used in goods falling in the new sub-class 091703, the use may be deemed to cover sub-class 091701 as well, since goods in these sub-classes have the same origin and are of a similar nature.

Hence, the SAC decision implied that, at least in a non-use cancellation action, under certain circumstances, the goods and services designated under a trademark can be interpreted as of the time the mark was registered. The SAC ruling has also opened a door for trademark use on a specific good to be deemed as use on other goods of the same nature, hence releasing the registrants’ burden of proof of use in the face of non-use cancellation actions. However, this opinion is not in line with many of the SAC’s previous decisions; for example, it has in the past strictly distinguished between breads and cakes, even though both items fall in sub-class 300602.

Takeaways

We can only wait to see whether future SAC decisions follow the same logic as this recent one. However, as it stands the court’s rulings are inconsistent. Seeing as unpredictable changes in the definition of commodity names are always occurring, it is recommended that trademark applicants include in their application both general and specific names that they plan to use for their goods to reduce the risk of protection gaps. After having their marks registered, they should review their portfolios from time to time and file new applications to resolve any issues that may arise.


This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.

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