Is Non-Profit Use Non-Trademark Use?

• Published date: 18 March 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Saint Island International Patent & Law Offices
• Author: Mr Tony Tung-Yang Chang

"Trademark Use," as provided in Article 5 of the Trademark Law, means the use of a trademark for marketing purposes in any of the following manners to enable the relevant consumers to recognize it as a source-identifier:

1. applying a trademark on goods or the packaging thereof;
2. possessing, displaying, selling, exporting, or importing the goods mentioned above;
3. applying a trademark on articles relating to services provided and
4. applying a trademark on commercial documents or advertisements relating to goods or services provided.

Moreover, the uses identified above can be conducted by means of digital audio/video, electronic media, the internet, or other media.

The stipulation of the aforesaid Article 5 was recently addressed by the Supreme Administrative Court (SAC) in a judgment rendered on December 30, 2020. In this judgment for a trademark opposition dispute, the SAC held that the term "for marketing purposes" in Article 5 should be interpreted as having the same meaning as "in the course of trade" provided in Article 16.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Therefore, the SAC pointed out, trademark use is not to be achieved only through activities of "paid or for-profit" nature. Asia Pacific Academy of Implant Dentistry v. Asia Pacific Association of Implant Dentistry, 109 Pan 670, SAC (December 2020).

As the case name reveals, this case pertains to a dispute between two dental associations, both acronymed "APAID", over their trademarks specified in the chart below. For the reader's convenience, we will simply call the two parties the Registrant and the Opposer.

The Registrant's mark was registered on October 12, 2012 in respect of, inter alia, "editing, publication, search, subscription and translation services for books, magazines and periodicals" in Class 41. Soon afterwards, it was challenged by the Opposer who asserted it had been using the above-mentioned based-upon mark in the same or relevant services since 2009. The Opposer further claimed that in view of the geographical link and service proximity, the Registrant must have known the based-upon mark and filed the opposed mark only in an attempt to squat on the based-upon mark.

In May 2012, the TIPO rendered a decision holding that, in view of the prior use evidence the Opposer produced, the opposed mark shall be revoked partially in respect of conflicting services, including "editing, publication, search, subscription and translation services for...