Newsletter
DECLARATION ACCEPTABLE AS PROOF OF USE FOR RENEWAL OF TRADEMARK REGISTRATION
Under the Trademark Law, proof of use of a trademark, such as sales documents or advertisements in Taiwan, is required for renewing a trademark registration. The task of collecting and reviewing the proof of use has always been a burden not only to the trademark owners but also to the examiners in the Trademark Office. Furthermore, such requirement often results in a delay in examination and approval for renewal of a trademark registration. As a compromise between meeting the legal requirement and reducing the burden incurred therefrom, the Trademark Office announced that, as of the January 1, declaration may be acceptable as proof of use to support renewal of a trademark registration.
According to the announcement, the declaration should be issued to the effect that the mark to be renewed was used in accordance with the Trademark Law by the registrant or its licensee within three years prior to renewal filing date or expiration date of the trademark/service mark registration, whichever is earlier. The specific items of goods/services on which the mark was in actual use should be listed in the declaration. In addition, the declaration should enclose any material bearing the mark, such as packaging, labels, descriptive literature, price lists, advertisements, etc.
If the Trademark Office has any question on the use status of the mark mentioned in the declaration, they will request the registrant to submit other proof to substantiate the use, such as sales documents used for business transaction in Taiwan, newspaper or magazine advertisements circulated in Taiwan, etc.
However, the announcement specifically points out that the declaration is only acceptable to prove use of a trademark for renewal purpose, but not in other circumstances. For instance, if a mark which has been renewed based on a declaration is subsequently challenged on grounds of non-use for three years by way of a cancellation action, the registrant would have to submit other proof of use, such as sales documents or advertisements, to defend the cancellation action. A declaration is not an adequate proof of use for such defense purpose.