商標「善意」先使用：明知或非明知？實習律師李汝民 Using its trademark with Bona fide: knowingly or not knowingly? Intern Lawyer Ru-Min Lee
Trademark Act Article 30, Paragraph 1(3): by bona fide, prior to the filing date of the registered trademark, the proprietor of the registered trademark is entitled to request the party who use the trademark to add an appropriate and distinguishing indication when there is an identical or similar trademark on goods or services identical with or similar to those for which the registered trademark is protected for which the use is only on the original goods or services.
The purpose for such is for the proprietor of the registered to exclude others from using its registered trademark. Even though such third person knowingly used another person’s well-known registered trademark with bona fide (Trademark Act Interpretation, page 95). However in order to prevent overprotection on its trademark right which obstruct its free trade competition, it is important to have an appropriate reconciliation between the first register doctrine and the doctrine of first use of trademark. Therefore some of the restrictions need to be imposed on its trademark rights.
What is ‘bona fide’?
However the word ‘bona fide’, from its interpretation in civil law means ‘bona fides third party’, which has ‘not knowingly’ meaning. Where the trademark is identical with or similar to another person’s registered trademark in relation to goods or services, for which another person’s registered trademark is designated, does exists its likelihood of confusion on relevant consumers, would have grounds for revocation.
In practice, the case of Taiwan Taipei District Court 93 years Zhi No. 70 can be used as reference. For its case, it indicates that the Trademark Act Article 30, Paragraph 1(3) ‘bona fide’ means ‘not for the purpose of unfair competition’. Despite that the proprietor of the registered has previously used its trademark, if such trademark is not registered and the third person still uses its trademark knowingly, such person is prohibited to claim prior use of such trademark after its trademark is being registered.
The judicial reasoning behind this case is that the third person must ‘not knowingly use its trademark’ to claim for its bona fide prior use. You can treat the word ‘bona fide’ defined in Trademark Act similar to the ‘bona fide’ defined in Civil Law.
There is wider interpretation of ‘bona fide’ by court, the case of Taiwan Taipei District Court 96 years Zhang Yi No. 597 indicates that in order “to determine whether such element satisfies the ‘bona fide’ defined in Trademark Act Article 30, Paragraph 1(1), you need to consider whether such Trademark Act would protect consumers’ best interest and to maintain trade market fairness and to promote industrial and commercial enterprises development. Apart from knowing whether such user knowingly used its unregistered trademark, it is important to know whether such user intent to take advantage of its trademark reputation in result of disturbing its trade market fair competition. The purpose for this is to protect the first trademark user with bona fide.
又現行商標法第30條第1項規定為：『凡以善意且合理使用之方法，．．．』，考其真意，核與美國法上之『fairly and in good faith』相當，是此『善意』並非民法上向來所解之『不知情』，亦不以無過失為要件。」
The Trademark Act Article 30, Paragraph 1 indicates: “reasonable with bona fide…”, is similar to the American Law “fairly and in good faith” but not similar to ‘not knowingly’ defined in Civil Law, which doesn’t constitute ‘negligent’ as one of the elements.
From the above cases, we can know that there are two scenarios to define ‘bona fide’:
Not knowingly the existence of other unregistered trademarks.
Despite knowing the existence of other trademark, but such user does not have the intention to take advantage of its trademark reputation.
What’s described in (1) is similar to the case of Taiwan Taipei District Court 93 years Zhi No. 70, however what’s described in (2) above focuses on ‘knowingly’ but with bona fide prior use. There seems to have wider interpretation of ‘bona fide’ defined in Trademark Act than what’s defined in Civil Law which is more toward the bona fide prior use doctrine.
After the amended Trademark Act Article 2 in 2003, after amendment, deleted the word ‘indeed with the use of means’, such Act inherited the registered protection doctrine and therefore after its amendment in 2003, there is no doubt that Taiwan employs a first-to-register system for trademark protection.
However the first-to-register system has its inherent problems to register trademarks even it is not really necessary. However there is a rule set out in its Trademark Act to cease its registration if such trademark has not been used for three years continuously. Therefore Trademark Act Article 30, Paragraph 1(3) ‘bona fide’ prior use should not have any wide interpretation to prevent any conflicts between the first-to register system defined in Paragraph 2.
On the other hand, Taiwan inherent Civil and Commercial combination system, therefore Trademark Act’s interpretation should be the same as the Civil Law in Taiwan otherwise there may have conflict of laws between the two systems.
最後，美國商標制度本即係採「先使用主義」，於1998年後其商標制度雖有修正，亦僅修正為「先使用與先註冊並行主義」，而非改採先註冊主義。故前述台灣高等法院96年度上易字第597號判決以美國法上之「fairly and in good faith」解釋我國商標法之「善意先使用」實對於我國與美國之商標體制差異有欠考量。綜上所述，本文認同台灣台北地方法院93年度智字第70號判決，「善意」先使用應以第三人非明知系爭商標已使用為要件。
Lastly America employs first-to-use system, despite that there was some amendment after year 1998, however it is still ‘first-to use-and-register-system’, not the first-to-register system. Therefore in the previously described case of Taiwan Taipei District Court 96 years Zhang Yi No. 597’s “fairly and in good faith” indicates Taiwan and America’s differences in Trademark’s ‘first-to-use’ system. For the summary above, the author personally believe that the case verdict from the case of Taiwan Taipei District Court 93 years Zhi No. 70, is to consider whether the third person used its registered trademark as one of the elements by employing its ‘bona fide’ prior use doctrine.
Intellectual Property Office (2005, May) Trademark Act Interpretation.
Taiwan Taipei District Court 93 years Zhi No. 70 Case
Taiwan Taipei District Court 96 years Zhang Yi No. 597 Case