Shoe trademark case clarifies requirements for proof of use

In Procter & Gamble Company v Chu, 91-Su-Chi 5196, the Taipei High Administrative Court has ruled that the materials filed by the defendant in a trademark cancellation action did not amount to evidence of use, even though they were all listed as examples of proof of use in the Trademark Law.

In 1993 Chai-Di Industry Co Ltd registered the trademark SK-II with some Chinese characters for various kinds of shoes. The registration was assigned to Chu Yuon Chien, a Taiwanese national, in 1999. Procter & Gamble Company (P&G) filed an action with the Intellectual Property Office (IPO) to cancel the registration on the grounds that the SK-II trademark had not been used for over three years.

The Trademark Law provides that the documents capable of proving use of a trademark include quotations, sales documents, the products themselves, affidavits or documents attesting to participation in a trade fair. In its defence to P&G's action, Chu submitted:

• shoes bearing the SK-II trademark;
  
  
• a quotation;
  
  
• affidavits from buyers and the Taiwan Footwear Manufacturers Association; and
  
  
• an advertisement.

The IPO accepted the materials submitted by Chu as valid proof of trademark use and dismissed P&G's action. P&G appealed to the Ministry of Economic Affairs (MOEA), challenging the validity of the proof submitted by Chu. The MOEA upheld the appeal and remanded the case to the IPO. However, Chu filed an administrative suit with the Taipei High Administrative Court, contesting the MOEA decision.

The court dismissed Chu's action and made the following findings:

• The advertisement was placed after P&G had filed the cancellation action.
  
  
• There was no document showing a correlation between the shoes, which bore no production date, and the quotation, which bore no trademark.
  
  
• The buyers claimed in the affidavit that they purchased shoes bearing the SK-II trademark in 2000, but stated nothing about quantity, price or model of the products concerned. No sales invoice was included.
  
  
• The affidavit issued by the Taiwan Footwear Manufacturers Association was a statement by the association's legal counsel based on "the best of his knowledge" rather than "the facts witnessed by him", about Chu's participation in the Taipei International Shoes Fair in 2001.

Accordingly, the court held that the materials submitted by Chu did not constitute evidence of trademark use and, thus, it remanded the case to the IPO.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei