The Trademark Act was amended and promulgated on August 25, 2010. Article 51 Paragraph 3 was amended and promulgated on May 28, 2003. The legislative history indicated that “a trademark registration, which violated Article 23 Paragraph1 Subparagraph 12 and was applied for in bad faith, should not be protected by the time limit because the application is for the purpose of benefiting from unfair competition, as referred to by Article 6 bis Paragraph 3 of the Paris Convention for the Protection of Industrial Property. Therefore, Article 51 Paragraph 3 of the Trademark Act provides that “The period referred to in the preceding paragraph shall not apply.” ”

Furthermore, Article 6 bis Paragraph 3 Comment (l) of Guide to the Application of the Paris Convention for the Protection of Industrial Property states that: “Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used.” As a result, the term “bad faith” stated in Trademark Act Art. 51 Para. 3, amended and promulgated on August 25, 2010, means not only that the trademark owner simply “knows” of the existence of another’s famous mark, but that he/she intends to profit from possible confusion.

Therefore, if the trademark owner competes with the famous trademark owner in the same industry, knows of the well-known mark, but still registers the same or similar mark in order to take advantage of the famous mark, the trademark owner can be said to go beyond the normal acts of competition and to attempt to benefit from possible confusion. In this case, the “bad faith” element is met, and the 5-year time limit provided in Article 51 Paragraph 3 of the Trademark Act should no longer apply

Application, Time limit on application for invalidation, Bad faith