TIPS^®  Taiwan Intellectual Property Special

De Jure Disappeared, But Replaced by a Judicial Procedure

The Applicant filed an application on March 15, 1996, to register Trademark “FRESH and WHITE LION” (trademark at issue), used on goods such as toothpaste and mouthwash, disclaiming “FRESH and WHITE” from the right of exclusive use. The registration was therefore allowed. The Petitioner filed invalidation against the trademark at issue, claiming similarity to a prior mark, “FRESH’N BRITE,” and the registration of trademark at issue was invalidated by the TIPO. The Applicant initiated an administrative appeal, which was dismissed, and then filed a re-appeal.* The Re-Appeal Board concluded that the order of invalidation and the appeal decision should both be vacated, and the case is remanded to the administrative body, i.e., the TIPO, for a de novo decision. In dissatisfaction with the result, the petitioner brought the administrative litigation to the Administrative Court.

The Taipei High Administrative Court (THAC) concluded that to institute administrative litigation, there should be an administrative order. If the administrative order is vacated by a re-appeal decision, it no longer exists, and if administrative litigation is brought with respect to said administrative order, it should be dismissed for lack of a protectable subject matter. As the administrative order and the appeal decision in the present case were vacated by the Re-Appeal Board, the Petitioner should not appeal based on the vacated decision. Rather, the petitioner should wait for the TIPO to make a de novo decision, and then appeal said decision if he/she is still in dissatisfaction.

However, when the case was appealed to the Supreme Administrative Court (SAC), the SAC ruled that the request of the petition at the THAC was to overturn the Re-Appeal Board’s decision, not the invalidation decision (i.e., an administrative order) from the TIPO. The Re-Appeal Board’s decision was in the appellate court, i.e., THAC, and therefore existed as a protectable subject matter for the administrative litigation. Therefore, the THAC was erred in remanding the case to the TIPO for a de novo decision. Instead, the case should be trailed in the merits before the THAC.

* Note: Re-appeal is an administrative remedy before July 2000. The parties then were entitled to appeal the TIPO’s decision (i.e., an administrative order) in the administrative system twice, i.e. administrative appeal in the Ministry of Economic Affairs (MOEA) and re-appeal in the Executive Yuan (Taiwan Cabinet), before going to the administrative court. After the Administrative Appeal Law and Administrative Litigation Law were amended and promulgated, there is only one procedure of appeal in the current administrative system, i.e. the administrative appeal before the MOEA. Then, two instances of administrative litigation are available, i.e., in the Taipei High Administrative Court and in the Supreme Administrative Court.