2011 Xing Zhi Shang Yi Zi No. 20
|2011 Xing Zhi Shang Yi Zi No. 20
|May 19, 2011
Article 30, Paragraph 1 of the Trademark Act provides, “Trademark rights do not extend to the following situations: … 3. prior to the registration application of such the rightful trademark, good-faith use of the same or similar trademarks in the same or similar products or services, except that such the good-faith use shall be limited to the products or services associated with such the prior use and the owner of the rightful trademark can ask the good-faith user to put a label on his products or services to reflect such differences.” The provision is from Article 23, Paragraph 2 of the previous Trademark Act. Before the amendment of the provision, the Executive Yuan sent to the Legislative Yuan the amendment draft, where the exception clause provided “limited to the prior used products and the prior manufacture-and-sale scale.” However, when the Legislative Yuan examined the amendment at the second stage, it deleted “the prior manufacture-and-sale scale,” so the above-mentioned statutory language “limited to the products or services associated with such the prior use” is not limited to “the prior manufacture-and-sale scale.” But, the question turns to what the meaning of “manufacture-and-sale scale” is. Does the so-called “manufacture-and-sale scale” mean the number of stores which is limited, or the limitation of “geographic areas”? In other words, can a good-faith user increase the number of stores that provide products or services? Can a branch store be opened in different geographic areas? Some think that during the second stage of the amendment, where “manufacture-and-sale scale” was removed, the legislation meant to decontrol the number of branch stores but not to expand geographic areas. Therefore, if a newly-opened branch store is in a geographic area that is very far from the original store, it should not be considered fair use in a good faith. This Court takes the legislative intent into consideration and holds that since the term “limited to … the prior manufacture-and-sale scale” was deleted during the legislative proceeding, it is hardly to say that the meaning of “limited to the products or services associated with such the prior use” can extend to “limited to the manufacture-and-sale scale.” That is, because the term “limited to … the prior manufacture-and-sale scale” was deleted during the legislative proceeding related to the amendment of the provision, where the intent was not to impose a limitation on “the prior manufacture-and-sale scale,” after the amendment, the term “except that … limited to the products or services associated with such the prior use” in the provision should be interpreted to impose no limitation of geographic areas and business scale. “Manufacture-and-sale scale” means expansion of the business space in the original store at the original address, opening of branch stores in the same geographic area, or opening of branch stores in different geographic areas. When the legislation deleted the limitation “limited to … the prior manufacture-and-sale scale,” it should have foreseen the above-mentioned different modes of “manufacture-and-sale scale.” Limiting the interpretation to “expansion of the business space in the original store at the original address” or “opening of branch stores in the same geographic area” is obviously an unlawful limitation on the statutory meaning, where the limitation was not expressed in such the statute, and is an interpretation that is not supported by law. As for the protection granted by the Trademark Act for trademark owners, the exceptional situation for prior good-faith users was created, where in such the situation, there might be prior trademark users who did not know trademark registration filing and whose trademark was later registered by others. In such the case, if a right based on other’s lack of knowledge of registration and right holder’s early registration needs to be protected first, and good-faith users cannot, therefore, keep on developing their business, that will be an inappropriate constraint on people’s right to work and right to exist, which does not meet the doctrine of belief. The provision does not express to limit geographic areas and business scale, so according to the doctrine of criminalization by law, the interpretation is deemed not to extend to a degree where the rights of prior good-faith users are extremely limited so as to expand the application of criminal law.
Prior user with a good faith, criminalization by law
|Article 30, Paragraph 1, Subparagraph 3 of the Trademark Act
- Release Date:2020-11-13