According to Articles 36(1)(4) of the Trademark Act, a registered trademark shall not entitle the proprietor to prohibit a third party from, using bona fide, prior to the filing date of the registered trademark, an identical or similar trademark on goods or services identical with or similar to those for which the registered trademark is protected.  The foregoing is the provision related to bona fide use of trademarks.  Furthermore, according to the same article, such bona fide use is only to the original extent, and the proprietor of the registered trademark is entitled to request the party who use the trademark to add an appropriate and distinguishing indication.  In practice, to claim bona fide prior use of a trademark, a party at least has to prove the following: 

① Such use is prior to the filing date of the registered trademark;

② Such use is based on bona fide and without unfair competition purpose; 

③ Such use is on goods or services identical with or similar to those for which the registered trademark is protected; and

④ Such use is within the original extent.

 

In its Judgment No.: 113-Ming-Shang-Su-42, the Intellectual Property and Commercial Court ("IPCC") expressed the opinion that, the "台大"(pronunciation as "Taida") trademark owned by National Taiwan University ("NTU") is a famous trademark in the field of academic education, teaching and research, but has not yet reached the level of famous trademark in the field of machinery and equipment, vehicle transportation, aerospace and marine transportation.  Therefore, the use of " " (i.e., "Taida Body Work") mark by Taida Transportation Equipment Co., (台大運輸設備有限公司, "Taida Transportation") prior to the registration date of NTU's "台大" trademark is a bona fide prior use and shall not be bound by NTU's trademark rights.

 

However, the court also expressed its opinion that, Taida Transportation should have known that the NTU's "台大" trademark was a famous registered trademark when Taida Transportation was established and registered, so it was not a continuation of its bona fide intent to use the word "台大" as the company's name instead of using its original name, "Taida Body Work", and it might have misled the relevant consumers of the relationship between the parties.  The court thus ordered that Taida Transportation should change its company name to a name that does not contain the same or similar words of "台大".

 

The legislative purpose of bona fide prior use was originally to balance the interests of the parties with the prior registration provisions.  According to the IPCC's foregoing opinion, in the future, when claiming the bona fide prior use of a trademark, it is necessary to pay attention to whether the manner of use is a continuation of the purpose and scope of the original bona fide prior use.  If such use exceeds the scope of the original extent, the court may consider that it has the intention of causing confusion and misperception of the relevant consumers as a result of the unfair competition.