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Trademark Information
August 27, 2018
The Trademark Right Protection in Taiwan Customs
April 17, 2018
How to Acquire Registration by using surname as a trademark
March 31, 2018
The importance of evidence of trademark use
January 24, 2018
Cooling-off period for trademarks
January 15, 2018
Nice Classification, 11th Edition–Version 2018

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Home  |  Trademark Information

March 31, 2018
The importance of evidence of trademark use

 

Everything just begins after a trademark is registered!

 

In general, after obtaining the trademark registration, a trademark owner may think he/she has the trademark rights and always omit to collect relevant evidence of use in related to the registered trademark. In practice, a trademark owner must use the registered trademark in correct methods. And should have a goods habit to collect the evidence of use periodically by electronic copy or paper copy, in order to avoid that no evidence can be provided when facing disputed procedures (i.e. opposition, invalidation, cancellation) raised by oneself or others.

 

Why is evidence of use important?

In Taiwan trademark practice, during the procure for opposition, invalidation, or cancellation, the competent authority will ask both parties to provide use of evidence for the disputed mark in order to prove that it has been used, the methods of use, using date, and who is using it…etc.

 

Although Taiwan is based on “First-to-register”, the registrant must use the registered trademark within three years after obtained the registration. Otherwise, an interested party may file an invalidation to cancel the registered trademark.

 

What kind pf evidence of use will be accepted?

According to the “Notice on the Use of Registered Trademarks” published by TIPO, we have organized the details for evidence of trademark use for your references:

 

The required evidence of use of non-traditional trademarks is basically the same as that of normal trademarks stated above. The evidence of use can be a sample of goods or services, trading documents, catalogs, newspapers or magazines or listing of commercial broadcast on TV or other media, wherein the use is in a manner that consumers can recognize the trademark as such. For example, as a score is merely a description of a sound trademark and does not play the trademark as it is actually used, it cannot serve as evidence of use of the sound trademark by itself.

 

 

Notice of use of evidence

In accordance with “Notice on the Use of Registered Trademarks”, evidence of use shall have the registered trademark, the date, and the user, or include information proving the recognizability of the trademark or the date and the user in order to prove the authenticity of the evidence. If a registered trademark is licensed, evidence of use by the licensee is acceptable, since trademark use by a licensee can be deemed trademark use by the proprietor of the trademark, and the evidence of use by the licensee can be submitted to the competent authority.

 

 

U.S.

The USTPO and TIPO has different trademark system, the USTPO based on the "First-to-Use" . In this regards, when filing a trademark application, the applicant must indicate on the application whether the trademark is being used or it is intended to use in the U.S. commerce.

 

If the applicant has been using the trademark, the evidence of use and relevant information must provide upon filing. For instance, the date of first use of the trademark on its designated goods/services (anywhere, not limit in the U.S. territory), the date of first use of the trademark on its designated goods/services in the U.S. commerce, declaration. If the applicant is intended to use the trademark in the U.S. commerce, the evidence of use must submit to USPTO after received Notice of Allowance. Otherwise, the application will be deemed as abandonment.

 

Declaration of Use must be filed between the 5th and 6th years after the registration date, and trademark renewal must be between the 9th and 10th years after the registration date. During both stages, the registrant must submit evidence of use of the trademark which is being used on its designated goods/services. If no evidence is provided or does not meet the standard of evidence of use, the registered trademark shall be cancelled.

 

Is it necessary to provide evidence of use for all designated goods/services?

The USPTO only request the registrant to provide one specimen of use from one of the designated goods/services in each class. Unless the examiner specifically requests the registrant to provide more, the registrant shall follow the instruction by then.

 

We have organized the suitable and not suitable specimen for goods and services as following for your references:

 

 

Goods

Suitable Specimen

Not Suitable Specimen

1.         Products for selling or shipping, the labels or tags or decal that can be attached or otherwise affixed to the products itself;

 

2.         Photographs or digital images of an actual product on which the trademark is imprinted or engraved;

 

3.         Photographs of a product package or shipping container on which the mark is displayed;

 

4.         A digital image of a website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the product;

 

5.         A catalog order sheet on which the mark is displayed along with an image of the product, in close association with price and ordering instructions;

 

6.         Photographs of a static display in which an actual product is exhibited along with a sign or poster on which the mark is displayed to customers, for example at a trade show or in a customer show room; signs or posters on which the mark is prominently displayed in connection with an exhibition or demonstration of the product at a trade show or in a customer show room;

 

7.         A packing slip or insert on which the mark is imprinted, where the packing slip or insert can be taped, tied or otherwise stuck onto or inside of the product or product packaging and which accompanies the product as it is shipped, and is not merely advertising;

 

8.         Point of sale display materials, for example a poster or placard on which the mark is imprinted and that is displayed with the product on a counter top  or display rack at the point of purchase; and instruction sheets and instruction manuals on which the mark is imprinted and which accompanies the product when it is sold.

 

1.        Advertising, flyers, leaflets, direct mail cards, circulars and brochures; Price lists; order forms; invoices; publicity releases; product catalogs; business cards;

 

And materials used for the purpose of conducting business such as invoices, bills of lading, waybills, inventory sheets, warranties and business letterhead stationery.

 

 



 

Services

Suitable Specimen

Not Suitable Specimen

"Trademarks are used to provide or promote the services." The provided proof of use  must show/contain the sales or advertisement of the designeated services. It can’t display with the trademark itself only.

 

1.         Brochures that introduce the content of designated services, advertisements, web page materials, business cards, stationery, newspapers and magazines advertisements, brochures, billboard, flyers, direct mail advertising, menus (restaurant service), business documents. For example, a letter or invoice is printed with the trademark and the document showing the services.

 

2.         Displaying trademark and the designated services on the shop sign (at shop entrance, or on company’s car)- Need to provide photos.

 

3.         Invoices (required trademark and service content are both revealed on the documents, otherwise it is not acceptable.)

 

4.         Trade shows that showing the mark and service content (photos are required)

 

5.         A static display in which an service content in a customer show room (photos are required)

 

6.         Outdoor advertising board marked with trademark and service content (photos are required)

 

7.         Broadcast/TV commercials with trademark and service content (Scripts/photos are required)

 

8.         Gifts that printed with trademark and service content. For instance, T-shirts, hats, mugs, calendars, pens, pencils, coasters, button badges…etc. (photos are required)

 

1.     Relevant printed materials for advertising purposes.

 

2.     Trademarks that mentioned in the News magazines

 

3.     Printing proof of advertising provided by the printing industry

4.     Published promotional articles on news media

 

 



相關連結
USPTO-How to Submit a Verified Specimen
USPTO-Trademark Manual of Examining Procedure
Intellectual Property Rights Monthly Magazine VOL.166 (October 2012 )-U.S. Trademark Office on Trademark Fraud Practice