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Title: Trademark Act CH
Category: Ministry of Economic Affairs(經濟部)
Chapter II Trademark
Section VI Revocation
Article 63
Grounds for revocation; revocation of some goods or services
The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following:
(1)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;
(2)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;
(3)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;
(4)Where the trademark has become the generic mark or term, or common shape for the designated goods or services; or
(5)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.
The revocation shall also apply in the case where the proprietor of the registered trademark who, knowingly or with reasonable grounds to know, shows no objection to the conduct as prescribed in Subparagraph 1 of preceding paragraph by a licensee.
The trademark registration shall not be revoked on the ground prescribed in Subparagraph 2 of Paragraph 1 if such use as in referred to in that subparagraph is commenced or resumed before the application for revocation is filed, unless any such commencement or resumption of use within the period of three months before the filing of the application is because the proprietor became aware that the application might be filed.
Where grounds for revocation exist in respect of some of the designated goods or services of the registered trademark, the registration may be revoked in respect of those goods or services.
Article 64
Identity of trademark
Actual use of a registered trademark by the proprietor in a form differing in elements which do not affect the identity of the trademark according to general concepts in the society shall constitute use of the registered trademark.
Article 65
Revocation procedure
The Registrar Office shall serve a copy of an application for revocation on the proprietor of a registered trademark, who may make observations to the revocation within the prescribed period; where the proprietor files the observations, the Registrar Office shall serve a copy of the observations on the applicant, who may comment on the observations of the proprietor within the prescribed period. An application for revocation may be dismissed directly if the application is devoid of any concrete facts and evidence or based on obviously groundless claims.
Where a copy of an application for revocation against a registered trademark on the ground prescribed in Subparagraph 2 of Paragraph 1 of Article 63 has been served on the proprietor of such trademark, such proprietor shall furnish proof of his/her use. Such registration may be revoked directly if the proprietor fails to make observations within the prescribed period.
Where the trademark registration was revoked on the ground prescribed in Subparagraph 1 of Paragraph 1 of Article 63, a trademark which is identical with or similar to the revoked trademark in relation to goods or services which are identical with or similar to those for which the revoked trademark is designated shall not be applied for registration by the former proprietor of the revoked trademark or transferred or licensed to such former proprietor within three years from the day following the date of revocation; the aforementioned shall also apply to the circumstance that the trademark right has been abandoned before the disposition of revocation rendered by the Registrar Office.
Article 66
Provisions govern in invalidation
With respect to the grounds for a revocation against a registered trademark, the provisions in effect at the time of the application for revocation filed shall govern.
Article 67
Provisions applied mutatis mutandis to revocation
Paragraphs 2 and 3 of Articles 48, Paragraphs 1 and 3 of Article 49, Article 52 and Article 53 shall apply mutatis mutandis to the examination of revocation.
Paragraphs 2 and 3 of Article 57 shall apply mutatis mutandis to an application for revocation on the ground prescribed in Subparagraph 1 of Paragraph 1 of Article 63.
Paragraph 3 of Article 57 shall apply mutatis mutandis to the circumstance that a proprietor of a revoked trademark furnishes proof of use pursuant to Paragraph 2 of Article 65.