The Effect of Covid-19 on Trademark Use in Taiwan

Although the Covid-19 pandemic has had only a limited effect on businesses in Taiwan, some trademark owners have suspended or discontinued use of their marks as they had to adjust their business models. Under Taiwan’s Trademark Law, a registration more than 3 years old can be cancelled if it has not been put to use unless there is a justifiable reason. The Covid-19 pandemic outbreak occurred less than two years ago, so legally no cancellation due to Covid-19 as a justifiable reason is possible at this time. However, some trademark owners might have shifted their mode of business but still use their trademarks. For example, a bar owner might have shifted his business from in house drinks and entertainment services to food and beverage delivery service in order to sustain trade when a Covid-19 outbreak has resulted in a ban on in house customers. This change in use of the mark will not necessarily transfer the same level of protection especially if there is a possibility of infringing on the rights of another mark. To best protect their marks, owners should try to avoid the risk of non-use cancellation actions by using their marks via appropriate marketing and not assuming that a shift in business model will not affect their situation. For foreign registrants, they should not assume that if the epidemic effects continue for a long time in their country and disrupt their business model, this will mean that it will serve as a justifiable reason for non-use of its registered mark in Taiwan. Also, those trademark holders who plan to expand or diversify their businesses under their mark, whether it is due to the pandemic or not, still need to conduct an infringement risk assessment, and if necessary, seek broader protection through new filings. Deep & Far Attorneys-at-Law