Concept of “Trademark Use”

1. The Trademark Act adopts the principle of protection by registration, so in principle only a registered trademark is under protection by the law. However, the purpose of a trademark is to represent the source of a product or service, so relevant consumers can rely on it to distinguish one source from other source of products or services. The core concept is “use.” Theoretically, “trademark use” can be categorized into “use for preservation of right” and “infringing use.” The former category is a use for preserving trademark right, meaning trademark use formats a trademark owner adopts to preserve the trademark right. The disputes about the first category mainly occur in administrative litigation related to revocation or invalidation of trademark registration. Besides, either civil or criminal court itself should decide whether there exists a reason to revoke or invalidate the trademark based on assertions or defenses brought by any party. The latter category is trademark-infringing use, meaning a form of trademark use where an acting person infringes the trademark. These disputes mainly happen in civil or criminal litigation about infringement. The substantial interest of distinguishing “use for preservation of right” from “infringing use” is that each has its own distinguishable, conceptual scope. That is, “use for preservation of right” is purposefully to maintain a trademark and to avoid the registration from being invalidated, so it indicates that the focus is compliance with the custom of commercial transactions. But, “infringing use” is based on the purpose of the Trademark Act to prevent confusion or misunderstanding and to protect the public interest. The conceptual scope includes not only typical forms of trademark use (that is, the use sufficiently makes consumers know that the use represents the trademark), but also non-typical trademark use which is a form that, however, still causes confusion or misunderstanding among consumers (that is, what is vested in Article 29, Paragraph 1, Subparagraphs 2 & 3, & Article 62 of the Trademark Act). The scope is broader than that of “use for preservation of right,” and only requires minimal use.

2. “Trademark use” under the Trademark Act means, for purposes of marketing, to use a trademark in products, services, or relevant subjects, or to use planar figures, digital vision and sound, electronic media, or other media, which sufficiently make relevant consumers know that it stands for the trademark. It is vested in Article 6 of the Trademark Act The concept of “trademark use” related to that article is consistent within the Trademark Act, which is self-evident because Chapter 1 “Principles” of the Trademark Act provides the meaning of “trademark use” in Article 6. Article 23, Paragraph 1, Subparagraph 14, & Paragraph 3, Article 29, Paragraph 2, Subparagraphs 1 to 3, Article 30, Paragraph 1, Subparagraphs 1 & 3, Article 33, Paragraphs 1 & 2, Article 36, Article 37, Article 57, Paragraph 1, Subparagraphs 1, 2, 5 & 6, & Paragraph 3, Article 58, Article 59, Paragraphs 2 to 4, Article 69, and Article 81, Subparagraphs 1 to 3 all have “use.” In terms of interpretation, it should be interpreted as “trademark use” and considered as one of the elements. Therefore, in terms of legal-framework-based interpretation, no matter whether the law suit is civil, criminal, or administrative, when discussing “use for preservation of right” or “infringing use,” the same concept of “trademark use” should be applied. The center is the concept of “trademark use” vested in Article 6, and the key is to determine whether the use that represents the identity of products or services can sufficiently make consumers know that it represents the trademark, so as to make distinctiveness from other’s products or services.

Trademark use, use for preservation of right, use for infringement