Date: 3 January 2024

【Volume 125】

According to the Taiwan Trademark Act, when a registered trademark has not yet been put to use or such use has been suspended for a continuous period of not less than 3 years without proper reasons, the trademark registration is vulnerable to partial or full revocation. Recently, the Taiwan Intellectual Property and Commercial Court (IP Court) concluded that providing after-sales maintenance services for previously discontinued products cannot be used as proof of use in a judgment regarding trademark non-use revocation¹.

Case Fact

Sampo Corporation filed the “CLAIRE” trademark for the use of “refrigerators; air conditioner; air conditioning apparatus; electric fans; laundry dryers; etc.” in Class 11, and was approved registration No. 01076607 in 2003. In 2020 a Korean company CLAIR, INC. filed an application for revocation with the Taiwan Intellectual Property Office (IPO). The IPO decided to revoke the “CLAIRE” trademark registration, which Sampo Corporation disagreed and thus filed an administrative appeal. The appeal was dismissed by the Ministry of Economic Affairs. Therefore, Sampo Corporation initiated an administrative litigation with the IP Court.

The IP Court Decided that After-Sales Services Are Not Trademark Use

Sampo Corporation did not deny that they no longer produce air conditioners. However, they argued that they still provide after-sales maintenance services for previously sold products, and that the maintenance fees for CLAIRE air conditioners were specifically indicated on the invoice. This behavior indicated an intention of marketing the conflicting mark and should be recognized as a fact of using the mark.

Yet, the court identified that since Sampo Corporation no longer produce air conditioners with the CLAIRE brand, the purpose of such after-sales service was obviously not for marketing the products, but for fulfilling the promise of after-sales services made in previous promotional sales. This was not a marketing behavior to promote future product sales, and it was inconsistent with the definition of “Use of a trademark, in the course of trade” in Paragraph 1, Article 5 of the Trademark Act. It could not be considered as the fact of trademark use. Thus, the IP Court decided against Sampo Corporation and revoked the “CLAIRE” trademark registration.