The Decision

Compare the product information advertised by the appellee (Defendant) before and after the filing date of the disputed trademark (May 5, 2015), such as soil removers, grip covers, armrests, speakers, shock absorbers, seat cushion springs, key covers, carburetors, screws, double discs, exhaust pipes, chargers, air filter shields, etc., the product names are slightly different, but they are all parts and components of various automobiles and motorcycles.

The restriction degree of the scope of " goods or services originally used " stipulated in Article 36-1-3 of the Trademark Act, should be measured based on the circumstances of each case to comply with the purpose of the legislation. It is difficult to identify whether the sold goods are identical before and after the filing date of the disputed trademark, but the categories of goods are all automobile and motorcycle parts and components.

The features of automobile and motorcycle parts are continuously introduced with new performance to fit new models over time. If the appellee (Defendant) is only permitted to sell the parts of old models, it is equivalent to prohibiting the appellee (Defendant) from continuing to use the words "Speedmoto". The defense of bona fide prior use will be in vain. The defendant’s work rights and property rights protection will be affected. It is only fair to consider that the appellee (Defendant) had continuously used "Speedmoto" for automobile and motorcycle parts before the filing date of the disputed trademark, and did not expand the scope of its use after the filing date.

The legislative rationale in 1992 for Article 36-1-3 of the Trademark Act showed that it is not limited to "original production and sales scale" and should be interpreted as having no restrictions on geographical area and business scale. Thus, the appellant claimed that the appellee’s bona fide prior use defense only applies to goods listed on the Lutian auction website, rather than those listed on the expanded Shopee auction website, which is unacceptable.

Ching-I Lu’s comments

1.     The issue in this case involved what is the scope of a bona fide prior user's use continually of the trademark.

2.     The old Article 36-1-3 of the Trademark Act at the time of the judgment of this case stipulated: "The following circumstances are not bound by the validity of other people's trademark rights:... 3. Before the filing date of another person's trademark, using bona fide the identical or similar trademark on the same or similar goods or services, but the use shall be limited to the goods or services originally used; …...”

What constitutes" goods or services originally used”? However, there have been many practical disputes over the years.

3.     The judgment, in this case, treats all automobile and motorcycle parts and components as the same products so that the defendant’s use did not exceed the scope of “the goods or services originally used”.

4.     However, in past practice, in the "得麗(Deli)" trademark infringement case, the Intellectual Property Court's Civil Judgment (104 min shen shan No. 6) held that even if five products including " Liver nourishing Pills" were in the scope of “the goods or services originally used”, sixteen products such as "hemorrhoids removal Pills" are not within the scope of the same. Not all “Chinese and Western medicines” are recognized as the same. This judgment was confirmed by the Supreme Court.

5.     This new Article36 of the Trademark Act, implemented on May 1 this year, has amended the text to read:” Before the filing date of another person's trademark, using bona fide the identical or similar trademark on the same or similar goods or services, but the use shall be limited to the scope originally used…..”.

Legislative rationale for this article: "Since the provisions of this paragraph are exceptions to the Registration Protection Principle, its scope should not be too broad. The amendment is limited to the "scope" of the original use. Thus, the "scope" includes the originally used goods or services, region, production and sales scale, marketing channels, and other matters, and the extent to which they should be restricted will be determined by judicial practice based on the circumstances of each case. "

6.     That is to say, after the implementation of the new Trademark Act, the scope applicable to the bona fide prior use defense is limited to the "scope originally used " rather than " goods or services originally used". However, what is the “scope originally used”?

7.     In the SOGO "太平洋(Pacific)" trademark infringement case in the past, the Intellectual Property Court Criminal Judgment(108 Xingzhishang Yizi No. 20) held that SOGO Department Store first used the太平洋 trademark in 1987, and opened many branches after the filing date in 1997 of other party's trademark, which is still applicable to the bona fide prior use defense.

However, according to the new standards of the new Trademark Act, can these SOGO branches open after 1997 in various locations still constitute the “scope originally used”?

8.     In this case, the appellant claimed that the appellee’s bona fide prior use defense only applies to goods listed on the Lutian auction website, rather than those listed on the expanded Shopee auction website, which the Court rejected. Further, if the new standard of Article 36 is followed, does expanding the market channel from Lutian to Shopee still constitute "scope originally use"?

The new amendment to Article 36 of the New Trademark Act seems to open a larger battlefield regarding this issue.