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Intellectual Property and Commercial Court

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2013 Min Shang Su Zi No. 53

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Decision No. 2013 Min Shang Su Zi No. 53
Date January 27, 2015
Decision Highlight

Article 2 of the Trademark Act stipulates that any person who wishes to obtain the rights of a trademark shall apply for registration therefor in accordance with this Act. Thus the Trademark Act adopts the first-to-file system and it is necessary to register for obtaining the rights of a trademark. The Trademark Act is different from Article 5 of the Patent Act, which recognizes the existence of a patent right before the patent is granted. As a result, the rights of a trademark don’t exist before the trademark is registered, and one can’t offensively exercise the trademark rights as a proprietor of a trademark.

If someone uses a trademark without registering it, he can only defensively argue that he is not bound by another’s trademark because of his bona fide prior use. He can apply for registration of the same trademark only after cancellation of the registered trademark in an opposition or invalidation proceeding based on trademark squatting.

If the one who has prior use of a trademark has the right to request the proprietor of a registered trademark to transfer the trademark to him or to have the court declare that the trademark rights belong to the prior user, then the principles of bona fide prior use and against trademark squatting will be unnecessary. It also goes against the first-to-file system which the Trademark Act adopts.

Keywords

First to file, Bona fide prior use, Trademark squatting

Relevant statutes Article 2 & Article 36 paragraph 1 Subparagraph 3 of the Trademark Act
  • Release Date:2020-11-13
  • Update:2020-12-07
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