2023-12-05
There is no specific regulation determining when the cancellation will be initiated by the TIPO ex officio. According to the search of the revocation cases from the database of the TIPO, we concluded the following two circumstances:
When a company has been dissolved and its trademark has been registered for more than three years, the TIPO may suspect that the registered trademark has not been used or has been continuously unused for a period exceeding three years, thereby violating Article 63.1(2) of the Trademark Act. The TIPO then initiates a revocation ex officio against the registration and notifies the registrant within a specified period to provide evidence of trademark use. Failure to respond within the specified period will result in revocation of the trademark.
When the TIPO receives a complaint from a third party by the reason that the actual use of the trademark may cause the public to be misled about the nature, quality, or origin of the goods, the trademark will be revoked according to Article 63.1(5) of the Trademark Act if the registrant''s response lacked a reasonable explanation.
Article 63 of the Trademark Act:
The Registrar Office shall, ex officio or by request, revoke the registration of a trademark if such trademark is in any of the following:
where the trademark is altered by the proprietor in different forms in which it was registered or supplemented with additional notes whereby the trademark is identical with or similar to another person’s registered trademark in relation to goods or services which are identical with or similar to those for which another person’s registered trademark is designated, and hence there exists a likelihood of confusion on relevant consumers;
where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee;
where no appropriate and distinguishing indication is added pursuant to Article 43, unless the indication has been added and hence there does not exist any likelihood of confusion before the disposition of revocation rendered by the Registrar Office;
where the trademark has become the generic mark or term, or common shape for the designated goods or services; or
where, in consequence of the actual use of the trademark, such trademark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services.