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MARKETING USE OF TRADE-MARK DEEMED ACT OF TRADEMARK OWNER
Article 31 Paragraph 1 Subparagraph 1 of the old Trademark Act provided that if, after registration of a trademark, the trademark design was altered such that it became similar to a registered trademark used by another on the same or similar goods, and it was used on such goods, the trademarks authority, acting on its own initiative or at the request of an interested party, should cancel the registration of the trademark con-cerned. Article 57 Paragraph 1 Subparagraph 1 of the current Trademark Act lists such alteration of a trademark as grounds for revocation of the trademark registration. From the wording of the Act, these provisions would appear to apply to cases in which the trademark owner has himself altered the registered trademark and used it in such altered form, and "altered " would appear to mean that the trademark owner has changed any part of the existing text, drawings, colors, etc. of the registered trademark, or has added to it other text, drawings, etc.
However, in a 2004 judgment, the Taipei High Administrative Court held that alteration or its use was not limited to actions of the trademark owner himself, and need not have been inten-tional; and that the fact that such alteration would lead to the altered trademark being similar to a registered trademark used by another person on the same or similar goods, also need not have been foreseen or recognized. (In this regard, Article 31 Paragraph 1 of the old Act, which provided for administrative liability, differed from Articles 62 and 63, which provided for criminal liability.) If such alterations are made by an agent or licensee of the trademark owner, or by a person who with the trademark owner's consent is in fact responsible for using the trademark to market goods, the outcome is no different than if the alterations were the actions of the person in whose name the trademark is registered. As long as the altered trademark is objectively similar to a registered trademark used by another on the same or similar goods, then the person in whose name the trademark is registered is exposed to the consequences of revocation of the trademark registration for only this view would be in keeping with the legal principle that rights and duties are inseparable, and only then could the Trademark Act fulfill its stated purpose of protecting exclusivity in trademarks and pro-tecting the interests of consumers, in order to promote the normal development of industrial and commercial enterprises.