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The Disputed Trademark
(Reg. No. 01597817)
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The Cited Mark in the Opposition |
The designated goods:
Editing, publication, search, subscription and translation services for books, magazines and periodicals, Editing of books and articles…boarding school, Correspondence courses… Production of karaoke music video, distribution of karaoke music video.
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The plaintiff, Asia Pacific Association of Implant Dentistry’s mark “Asia Pacific Association of Implant Dentistry APAiD & device” has been registered with registration No. 01597817. The participant, Asia Pacific Academy of Implant Dentistry, raised an opposition against the disputed trademark for the violation of Trademark Act, Articles 30.1.(5), (11), (12) and (14). The Taiwan Intellectual Property Office (TIPO) made a decision that the registration of the disputed trademark should be partially cancelled in the designated services “Editing, publication, search, subscription and translation services for books, magazines and periodicals...Organizing cultural activities (62 items in total)”. The plaintiff had filed an appeal and an administrative litigation but both were rejected. The plaintiff refused to accept the result and continued to appeal to the supreme administrative court. The supreme administrative court finally cancelled the original judgment. Their viewpoints are presented as follows: |
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To fulfill the requirements in accordance with the Trademark Act, Articles 30.1.(12), apart from (i) the trademark is identical with or similar to another person’s trademark used earlier; (ii) with the same or similar goods or services; (iii) the applicant knows of the existence of another person’s trademark because of a contractual, geographic, business, or other relationship with that other person; (iv) the prior user did not consent to the application for registration, prior use of the other’s trademark is essential, and an intent of imitating that trademark is the center of this article. The prior user’s use of the trademark should not only conform to the Article 5 of Trademark Act, but also fulfill the requirements that it is used in the "business transaction process" and “to be sufficient for the relevant consumers to recognize as a trademark, and it should conform to the business trading practices”.
Logos indicating the name of a group should be distinguished from the above defined use of trademarks. If the group only provides services to their own members but not to others, it can hardly be recognized as use of trademark.
The original judgment found that evidence proving the participant’s prior use of the trademark is only the participation in the international annual conferences held in the Philippines and Thailand in 2009 and 2010. The above evidence can only prove that the annual meetings are held regularly among APAID members instead of providing services to others. The original court should make a detailed investigation to clarify whether the cited mark has been used as trademark earlier rather than merely used to indicate the name and mark of the APAID membership. Besides regularly organizing annual meetings for members, are there any services or activities provided to others as the use of a trademark? The original judgment did not discuss the use of the trademark, so it was held in contravention of the laws because of not providing such reasons.
Furthermore, it is necessary to determine on which goods or services of the trademark are used in order to judge the intent of imitating according to this article correctly, and whether it is used in the identical or similar goods or services.
According to the original judgment, "APAID held the APAID International Annual Meetings in the Philippines and Thailand between 2009 and 2010. Besides inviting experts to give speeches and conduct academic exchanges, the cited mark had also been used in the conference materials and publications." Hence, "it has been used earlier in the arrangement and holding conferences and academic publishing services.” However, if a conference is held, it should have conference printed materials, introduction of the conference agenda, articles of the conference been published and made into publications, etc. These publications are only published for the conference. Hence, whether it can be recognized as use of trademark should be further investigated and reviewed in detail.
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