2012 Xing Shang Su Zi No. 108
|Decision No.||2012 Xing Shang Su Zi No. 108|
|Date||October 25, 2012|
During the examination of a trademark application, the Applicant is allowed to delete/narrow down certain goods or services, if said goods or services conflict with those of a registered trademark. Article 20, Paragraphs 1, 2 of the Trademark Act accorded to the issuance of the disposition in issue merely indicated that an Applicant can submit an amendment to delete/narrow down the designated goods or services after the filing of a trademark application before the trademark office. Article 27 of the Implementation Regulations of the Trademark Act accorded to the issuance of the disposition in issue ruled that “(Paragraphs 1) during the procedure of an administrative remedy associated with a trademark opposition case, when the opposed trademark was allowed to be divided or the designated goods or services were allowed to be deleted/narrowed down, the Trademark Office should notice the trial authority of the administrative remedy and the opposer with said division or deletion/narrowing-down; (Paragraph 2) the preceding Paragraph shall apply mutatis mutandis to a trademark application, which has been divided into two or more applications or the designated goods or services thereof have been deleted/narrowed down before said application has been conclusively rejected. Neither of the aforementioned articles specified an exact timing to delete/narrow down the goods or services by the Applicant of a rejected trademark application. As a result, in view of the significant interrelation between the timing to proceed with a deletion/narrowing-down of the designated goods or services by the Applicant and the confirmation/examination of the scope of the trademark application, said timing should be deemed as an important issue involving the legitimate rights and obligations of the people, and thus should be determined by law in accordance with Article 5, Paragraph 2 of the Standard Act for the Law and Rules. Further, in order to refrain from wasting administrative resources and to promote a faster disposition against the trademark application, while the Trademark Act was amended and promulgated on June 29, 2011, that the deletion/narrowing-down of the designated goods or services should be proceeded with before the decision of rejection being issued by the Trademark Office was stipulated in Article 31, Paragraph 3 of the Trademark Act, provided that sufficient opportunities for the Applicant to consider whether to proceed with the deletion/narrowing-down of the goods or services have been given by introducing an advance notice of the ground(s) for rejection as well as the relaxation of the response deadline into the amend and promulgated act.Rather than proceeding with the deletion/narrowing-down of the goods before the Trademark Office, namely, the Defendant, the Plaintiff did not disclose its intention to delete/narrow down the goods until the present administrative litigation was commenced and heard by this court, this court is therefore prevented from examining the request for deleting/narrowing-down the designated goods due to the respect for the first judgment right of the executive branch.
|Relevant statutes||Article 31, Paragraph 3 of the Trademark Act Amended and Promulgated on June 29, 2011|
- Release Date:2020-11-16