Registered Trademarks Remain Valid Until Revocation

09/01/2010

---

The Trademark Act provides legal processes for the revocation, opposition, and invalidation of trademarks. When the Intellectual Property Office mistakenly accepts a trademark registration when it should have denied it, its decision is subject to cancellation through either an opposition or invalidation action. The effect of such cancellations is retrospective.

A revocation, on the other hand, seeks to cancel a properly registered trademark because of subsequent illegal use or public interest concerns. While the Trademark Act does not explicitly specify whether the effect of a revocation is retrospective or prospective only, Article 125 of the Administrative Procedure Act provides that such administrative decisions should take effect prospectively. Therefore, pursuant to the Trademark Act, a right holder of a registered trademark may seek damages or injunctive relief against infringing actions that took place while his trademark is still in effect, even if the trademark in question is later revoked. The Intellectual Property Court agreed with this interpretation in its recent decision in civil case (98-Ming-Shang-Su-No. 41). Registered trademarks remain valid until revocation.