Yes, you should build your business on trust, but not only on trust. There is an interesting trademark case we found on the Taiwan Intellectual Property Office (TIPO) database that just shows how brutal the business world can be.
Company A filed an application of their own trademark, let’s call it “XYZ gym”. This application was rejected because of infringement with the pre-existing trademark “XYZ” owned by the individual Person B.
In Taiwan, the first-to-apply rule says that the first one to file for a trademark application will be granted the registration and the exclusive right of use.
But this is not an ordinary case, let’s take a closer look at the application times of the two trademarks mentioned above.
- Trademark “XYZ” 2018/04/20 15.17pm
- Trademark “XYZ gym” 2018/04/20 17:55 pm
Yes, the time gap is less than 3 hours! But the first-to-file rule will favor the first person even by just a second.
Actually, as trademark agents that have been in the field for over a decade, it is hard for us to believe this is just a “coincidence”. Our first reaction when seeing the time gap is “hmmm” how is it possible that Company A filed the application just right after the individual submitted their case?
Coincidence or not, for Company A, the first-to-file rule is not on their side as they fight for their right to register “XYZ Gym”. They need to find a way to get the trademark “XYZ” cancelled. Luckily there is one article in the trademark law they can use.
- A trademark shall not be registered in any of the following:……being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.
Based on this article, Company A filed a trademark opposition to the trademark “XYZ” owned by Person B. This is the battle they can’t afford to lose or their name will be lost forever.
Their key task is to prove that this individual Person B is somehow related to Company A and there is a possibility that he or she knew Company A is the earlier user of the trademark Trademark “XYZ gym”.
They successfully won back partial rights; they got the exclusive right of using “XYZ gym” for their gym and to provide other sports services but the court said they can’t use it for holding sporting events.
Despite the results, the part that is surprising is the HOW.
The individual Person B is also the owner of a gym. About the submitted evidences, there are pictures of the owner of Company A and Person B hanging out and also screenshots of chats they have sent each other.
It seems that the owner of Company A and Person B are friends but still have a competitive relationship.
To register your trademark should not be considered something you can do later.
We have heard too many times from companies that “we just started so no one knows our brand” and we have also seen so many surprised faces when we tell them someone is squatting on their trademark.
Who are you mentioning your new trademark to? Any employee? Any investor? Some vendors perhaps? This case luckily ended kind of ok for Company A but it could just as easily have ended with them having to change all their branding. You may not be as lucky if this happens to you.
Just like anything that is worth protecting, registering your trademark is not cheap but it is cheaper than fighting with squatters or going through a rebranding. Trademark protection also requires a thorough plan that will stay secure for future usage.
Planning to sell your product in Taiwan or just about to start your business in Taiwan? You need to register your trademark and we would love to help you, contact us now.