1. According to the Trademark Act, “use of a trademark” means to apply a trademark for a purpose of sale upon goods, services or articles related thereto, or through the adoption of plane images, digital audio-video means, electronic media or other media, where such trademark is capable of being recognized by relevant consumers as a trademark, as stipulated by Article 6 of the Trademark Act Amended and Promulgated on August 25, 2010. Accordingly, there are three requirements with respect to “use of a trademark”

(1) For a purpose of sale:on of the Judicial Yuan Interpretation No. 480 and the interpretation opinion of the Interpretation No. 612.).
This refers to sale or commercial trading in the market. While referring to Article 30, Paragraph 1, Sub-Paragraph 1 of the Trademark Act Amended and Promulgated on August 25, 2010, “The following circumstances shall not be bound by the effect of a trademark right owned by another:

i) indicating his/her own name or term, or the term, shape, quality, function, place of origin, or any other description in relation to his/her own goods or services, in a manner of reasonable and bona fides use rather than using it as a trademark……”, the purpose of “identifying his/her own goods or services” for a trademark proprietor to apply for a trademark registration is included as one element to determine the “purpose of sale” in regard to “use of a trademark” while excluding the circumstance of “general use” (that is, in a matter of form, a general use is to use a trademark upon goods without initiating a “use of a trademark”).

(2) To apply a trademark upon goods, services or articles related thereto, or through the adoption of plane images, digital audio-video means, electronic media or other media:
Because Article 6 of the Trademark Act Amended and Promulgated on August 25, 2010 stipulates that “to apply a trademark upon……”, and if there is no behavior of actively marking the trademark, how can the trademark proprietor let the relevant consumers recognize the same as a trademark and distinguish goods or services of the trademark proprietor from goods or services of another? As to the embodiments for the behavior of marking, it shall be determined in a case-by-case manner, while the adopted method or embodiment, such as fond, shape, color, location on the page and so on, shall be examined in combination, and it is not a use of a trademark per se simply because a portion of or the whole trademark design is marked upon goods, services, relevant articles or media.

(3) The marked one is capable of being recognized as a trademark by relevant consumers:
This means that the use of a trademark shall demonstrate distinguishability (distinguishability upon use). It shall consider here that “the trademark in the preceding paragraph shall be able to let relevant consumers recognize the same as a mark to identify goods or services, and to distinguish goods or services of the trademark proprietor from those of another” as stipulated in Article 5, Paragraph 2 of the Trademark Act Amended and Promulgated on August 25, 2010, so as to incorporate the feature of a trademark for identifying goods or services into the determination of the “use of a trademark”.

2. “Showing description in relation to the goods or services themselves in a manner of reasonable and bona fides use” as stipulated in Article 30, Paragraph 1, Sub-Paragraph 1 of the Trademark Act Amended and Promulgated on August 25, 2010, means to show description in relation to the goods or services themselves in a manner of reasonable and bona fides use of a mark while not knowing that the mark is a registered trademark of another, and such use emphasizes upon the description of the goods or services without initiating the use of a trademark (referring to the Civil Case Decisions of 2008 Tai Shang Zi No. 364, 2010 Tai Shang Zi No. 1632 and 2011 Tai Shang Zi No. 295 by the Supreme Court). The so-called “indicatively reasonable use” is to use a trademark of another to indicate the goods or services of said another; that is, to indicate the source of the goods or services of another by using the trademark of said another, in order to identify the contents of the goods or services provided by the user himself/herself. In the case that the use of the user is not to identify his/her own goods or services, or unable to let the consumers recognize that the mark is a trademark, there is no likelihood of confusion upon the source of the goods or services existed among the relevant consumers, and such use is therefore beyond the scope of the trademark right, and no exclusive protection shall be provided upon the trademark accordingly.

3. Regarding the issues, such as whether it is a use of a trademark or merely a description or indication for sale of goods (indicative use) when the appellee marked the trademark at issue upon its signs and relevant articles because of its displaying and selling of goods with the trademark at issue as well as goods of other brands together? whether there is any evidence to show the custom of setting up a sales counter within the department store as asserted by the appellant? and the marking of trademarks in a single, apparent means as asserted by the appellant, this court has ordered both parties to deliver arguments thereto, so as to provide them with the opportunities of debating each other during the trial.

4. Although the appellee made the following arguments, such as that the marking of “O” at its sales counter is to show that goods with the trademark at issue are sold at said sales counter, which established an embodiment of an indicative use, and that goods with different registered trademarks sold in the same store is a legitimate operating embodiment commonly seen in a shopping store, while submitting photos of commercial signs by another merchant as supporting evidence; however, as aforementioned, the warranty card provided to consumers on the day of xxxx by the sales clerk behind the counter in Yilan not only adopted the trademark design at issue, but also indicated “xxx Company”, despite the facts that the appellee (xxx Company) clearly knew that the appellant is the proprietor of the trademark at issue and that the contract at issue between the appellee and the appellant has not been renewed since the expiration date of xxxx, such indication is therefore not correct and fails to reflect the truthfulness of the goods as well as the precise relationship between the appellee and the appellant. Further, although the appellee sold goods with the trademark at issue as well as goods of other brands at the same time, a likelihood of confusion was sufficiently incurred among the relevant consumers upon the sources of the goods purchased due to the undue marking of the trademark at issue, not to mention the fact that certain consumers has actually confused the goods purchased from the appellee with the genuine goods provided by the appellant. Furthermore, the appellee marked the trademark at issue directly upon the sales counter signs, billboards, commercial lights, display cabinets and stands in the sales counter of each department store, and has incorporated the trademark design at issue into goods like bags or suitcases to be sold by the appellee, it is therefore a use of the trademark rather than a mere description of the goods. As a result, such use is apparently not a reasonable and necessary use of the trademark at issue associated with the sales of the “O” line of goods, which has gone beyond the scope of a reasonable and bona fides use.