I. Facts of the case

In 2008, Win TV Broadcasting Co., Ltd. (hereinafter “Win TV”) applied to register the trademark, “Brother Caramel” (“焦糖哥哥” in Chinese), and was approved. However, recently, the actor Jia-Hsing Chen, who used the trademark as his stage name, filed for revocation of the trademark based on that fact that, “the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use,” and his application was approved by Intellectual Property Office (hereinafter “IPO”).

Win TV then filed an administrative action against IPO. However, the Intellectual Property Court judgment 109-Xing-Shang-Su-Zi No. 101 held that, Win TV indeed have not put such trademark to use in the three years prior to the application for revocation, and ruled against Win TV.

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II. Legal provisions

• Subparagraph 2 of Paragraph 1 of Article 63 of the Trademark Act provides, “The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following: where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee.” That is to say, the function of a trademark and the purpose of its registration can only be realized through the actual use of the trademark. Only when a trademark is actually put to use, consumers can connect a trademark with a product/service, making it function by means of product/service identification, guarantee of quality, and advertisement, which then reflects value as a trademark. If a trademark owner only registers and holds the trademark but does not use it, the trademark owner not only hinders others from the opportunity of registering such a trademark, but also makes the trademark lose its functions and value.

Hence the IPO’s revocation was with merit.

• With respect to the definition of the “use” of a trademark, Article 5 of the Trademark Act provides, “’Use of a trademark’ means any of the following acts, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark:

(1) to apply a trademark to goods or packaging or containers thereof;

(2) to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;

(3) to apply a trademark to articles relating to the provision of services; or

(4) to apply a trademark to commercial documents or advertisements relating to goods or services.

The preceding paragraph shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media.”

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III. Key points of the Intellectual Property Court judgment 109-Xing-Shang-Su-Zi No. 101:

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(I) Use of the text “Brother Caramel” in programs does not equal use of the trademark

Although Win TV provided evidence consisting of list of programs and music videos/DVDs of albums which used the text “Brother Caramel,” the court held that those only proved that Jia-Hsing Chen once used the name “Brother Caramel” as his name to work as a host or an actor in Win TV’s program series or albums. In addition, the aforesaid evidence showed, or only showed, the text “MOMO” or “MOMO Kids Station.” Hence, the consumers’ recognition of the name “Brother Caramel” only points to a certain person or role; the name is not used to identify the service of a certain entertainment agency, and the use of the name does not constitute use of a trademark.

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(II) The setting or playing of a role does not equal use of a trademark

Win TV alleged that many characters in their programs have been played by different people and the trademark right of the character name belonged to the plaintiff. However, the court held that the circumstances surrounding a character pertains to the cooperation model stipulated between the parties and the doctrine of freedom of contract, which is a different issue from whether the trademark had been actually used. With respect to the actual use of the text, “Brother Caramel,” in the programs, it was not particularly conspicuous.

The way it was presented was, when the host or actor was introduced, the text would be placed next to the person’s face. According to the consumers’ common understanding, this type of presentation was only to note the name of a character or role in a program or activity. The consumers could not recognize or realize from the program or activity that “Brother Caramel” is related to the service designated by the disputed trademark.

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IV. Conclusion

Judging by this case and other past court judgments, in practice, to determine if a trademark meets the criteria for “use” provided in Article 5 of the Trademark Act, the court mainly considers:

1. whether the plaintiff’s subjective intention was to use it for marketing purpose;

2. objectively speaking, whether the trademark was used on the product or service for which it was registered, and was sufficient to make consumers recognize it as a trademark. Therefore, even if the trademark holder did continue to use or exhibit the trademark, as long as its use was not on the product or service for which it was registered, or the consumers could not recognize it as a trademark, such cannot constitute “use” in the Trademark Act. If a trademark is not used for three years or more, revocation of such a trademark is grounded.

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(Author: Chuan-Ru Lee, Intern Attorney)