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ADMINISTRATIVE AGENCIES AND COURTS MUST CONSIDER NEW EVIDENCE
CHANG, YU-CHIEH
In 1983, Company A applied to the Intellectual Property Office (IPO), Ministry of Economic Affairs to register a trademark comprising a textual portion and a graphical portion, for use on scientific instruments and medical appliances. The IPO granted registration of the mark and its subsequent extension.
Company B, a US company, filed a request for invalidation of the above trademark registration, on the grounds that the English textual portion of trademark of Company A was plagiarized from the trademark of Company B, and thus violated Article 37 Paragraph 1 Item 7 of the Trademark Law as in force at the time of the extension of registration. The IPO rejected the invalidation action. Company B filed an administrative ap-peal and re-appeal, neither of which was upheld, and subsequently brought an administrative suit. In its judgment, the court set aside the adminis-trative re-appeal and appeal decisions and the original administrative decision, and ordered the IPO to carefully re-examine the case and to make an appropriate disposition. The main reasons for the court's judgment were as follows:
Import licenses and import invoices submitted in evidence by Company B showed that its use of the trademark clearly predated Company A's application for registration of the disputed trademark.
The determination of facts in administrative litigation is not bound by the rules governing the investigation and determination of facts in criminal cases; however, this does not mean that evidence gathered in a criminal investi-gation cannot be admitted in evidence in ad-ministrative litigation. The responsible officer of Company A admitted that it was only be-cause Company B had been continually changing its trademarks that he had applied for registration of the disputed trademark, in order to consolidate the Taiwanese market. This showed that he was clearly aware of the trademark of Company B, which it used on medical equipment imported into Taiwan. Nevertheless, with a view to avoiding the frequent changes in Company B's trademark and consolidating the Taiwanese market, Company A had used the same brand as the foreign-language portion of the disputed trademark design. This action seemed not to be above suspicion of plagiarizing the "Pill-ing" trademark.
An application to extend a trademark regis-tration is in the nature of a renewal of regis-tration, and should be judged on whether grounds for refusing registration exist at the time of granting extension. In the re-appeal decision, the appellate agency dismissed the plaintiff's re-appeal on the grounds that the information submitted by Company B was not sufficient to show that the trademark under review was well known to consumers in gen-eral at the time of the original application for registration. This was to some degree incon-sistent with the above principle.
In both the administrative re-appeal and the case before the court, Company B submitted computer data showing the importation of medical equipment carrying its brand name into Taiwan by Company A during the period 1982 to 1992, as well as invoices for the im-portation by Company A of Company B's medical equipment in February, March, Sep-tember and October of 1993. If the above information was authentic, there was room for consideration as to whether Company B's brand name was known to consumers in Tai-wan during the period from 1981 to 1993, and whether the disputed trademark was likely to mislead the public. The above information was not submitted by Company B at the time of the original administrative decision or of the initial administrative appeal decision, but was not considered. The administrative re-appeal decision erred in failing to take such evidence into consideration.
