When the services provided by the trademark owner are overseas, how can it be determined that the trademark has genuine use in Taiwan?

1.      Case Process:

An Australian company registered the “CROWN” trademark in Taiwan, designating services such as "hotels, accommodations, restaurants, cafes, beverage shops, breweries, and bars." In 2020, a third party filed a non-use revocation against the trademark. The case went through various proceedings, including cancellation, administrative appeals, and litigation, and was ultimately affirmed in March 2024 (Intellectual Property and Commercial Court Case No. 14 of 112).

2.      Judgment Summary:

Although the "CROWN" hotel and accommodations located in Australia do not have service locations or operate hotel services in Taiwan, they market their services through travel agencies in Taiwan. Additionally, Taiwanese consumers can book stays via websites such as Tripadvisor and ezTravel. This indicates that a portion of the transactions related to the "CROWN" trademark services has been completed within Taiwan. Therefore, the "CROWN" trademark possesses economic significance in establishing or creating a market or channel for its services in Taiwan, aligning with the principle of trademark territoriality. This is sufficient to affirm that the "CROWN" trademark has genuine use in Taiwan.

3.      Conclusion

After obtaining a trademark registration, the trademark owner has an obligation to use the trademark. However, multinational companies may not necessarily establish local branches or physical operations in every country where they have trademark interests. Trademark owners can collaborate with local businesses or leverage online shopping and social media to promote the goods or services associated with their trademarks. If courts recognize that part of the transaction process, such as placing orders, paying deposits, or receiving goods, occurs within Taiwan, along with supporting evidence like local media reports, online articles, or forum discussions, the trademark may be deemed to have genuine use in Taiwan. This could effectively protect the trademark rights.