According to Articles 33(1) and 35(1) of the Trademark Act, the proprietor of a registered trademark shall have the exclusive right of the trademark from the date of publication for registration, and shall has the exclusive right in the trademark in relation to the designated goods or services.  As for revocation situation, Article 63(1) provides several scenarios under which the Registrar Office (i.e., the Intellectual Property Office, "IPO") shall, ex officio or upon an application, revoke the registration of a trademark.  However, in the scenario that the IPO revokes the trademark registration, when does the trademark right expire? There have been differing opinions on this matter in practice.

 

In the case facts of Judgment No.: 113-Ming-TM-Shang-Guan-2 rendered by the Intellectual Property and Commercial Court ("IPCC"), the subject Trademark 1 was revoked by the IPO on August 31, 2023, with notice served on September 4 of the same year, while the subject Trademark 2 was found by a court judgment on November 16, 2023, to be subject to grounds for revocation.  The IPCC stated that, the Trademarks were subject to grounds for revocation as of the date of the revocation application, namely July 20, 2021; therefore, it is held that the trademark owner cannot seek damages for trademark infringement for the period following the date of the revocation application.

 

However, after the case was appealed to the Supreme Court, in the Judgment No. 114-Tai-Shang-1895, the Supreme Court stated that, an administrative disposition remains in effect unless it has been revoked, annulled, or has otherwise lapsed.  Therefore, if, after a trademark is registered, the trademark owner has not used it without just cause, or has ceased using it for a period of three years or more, though grounds for revocation do exist, a trademark right does not automatically lapse as a result.  According to the Supreme Court, the trademark owner may still seek damages for the infringement of the subject Trademark rights from November 8, 2017, to November 24, 2022, provided that such infringement occurred prior to the revocation decision.  The case is thus remanded to the IPCC for retrial.

 

According to the opinions that the Supreme Court cited above, if a court finds grounds for the revocation of a trademark, the date at which the trademark owner may not assert its rights against the opposing party in such civil proceedings, as well as the date at which the trademark is revoked and the rights can no longer be exercised, should both be calculated from the date of the court’s determination, rather than from the date the opposing party filed the application for revocation.  This approach is consistent with the established interpretation of the legal system.