The Decision

Before issuing a revocation decision, TIPO shall notify the trademark owner of the application for revocation by others and specify a certain period for the trademark owner to defend (Article 65 of the Trademark Act). This is because the revocation of trademark registration is an administrative action that restricts or deprives the trademark owner of rights. Before making such administrative action that infringes on rights and interests, TIPO should implement due legal procedures and allow the trademark owners to state their opinions and defend themselves. 

Article 65(Ⅱ) of the Trademark Act stipulates: “… If the notice of defense has been served, the trademark owner shall prove the fact of its use; if the trademark owner fails to defend before the deadline, the registration should be revoked." This is because only the trademark owner knows the truth about whether the trademark is actually used, the trademark owner should bear the burden of proof for the positive fact of use. However, if the trademark owner fails to file a defense, TIPO will have no positive evidence for review, which will make it difficult to proceed with the revocation procedure. Therefore, TIPO is empowered to revoke the registration without conducting an investigation. 

Thus, the purpose of these articles is to protect the procedural interests of the trademark owner, impose the burden of proof on the trademark owner, and grant TIPO to revoke the registration without conducting an investigation rather than to restrict the time for trademark owners to submit use evidence. 

Accordingly, if a trademark owner fails to file a rebuttal before the deadline indicated by TIPO, and his registration is revoked by TIPO under Article 65(Ⅱ) of the Trademark Act, he may still submit use evidence to prove his trademark use during the MOEA appeal and administrative litigation stages.

Ching-I Lu’s comments

1. In practice, to initiate the revocation procedure, the revocation applicant must first provide specific evidence and make a preliminary showing of the fact that the trademark owner has not used the trademark for three years, but only a "preliminary showing" is required. Whether the trademark is used or not, the burden of proof lies with the trademark owner. 

2. Therefore, once the revocation procedure is initiated, the trademark owner’s response is crucial. If no response is submitted, the trademark right will be revoked. This is very different from the situation in opposition cases. In opposition cases, even if the trademark owner fails to respond, TIPO will still consider all the evidence in the files and decide whether to cancel the disputed trademark. In practice, it can still be seen that even if the opposed party does not defend, however, TIPO still made a decision favorable to the opposed party. Moreover, even if the case goes to court, the judgment will not necessarily be in favor of the opponent just because the opposed party does not participate in the proceedings. However, if the opposed party does not express its opinion, the probability of the trademark being canceled is proportionally higher.

3. As to how the revocation applicant makes a " preliminary showing "of the fact that the disputed trademark has not been used within three years, in practice, it is usually done with an investigation report. If the trademark owner company has been dissolved for more than three years, the company record for dissolution can also be the "preliminary showing". In this situation, it may also be possible to directly request the examiner ex officio to revoke the trademark.