What Happens When the Scope of a Registered Mark Has Been Changed by the IP Office’s New Classification of Goods & Services?

During the long and renewable term of trademark rights, it is not uncommon that the classification of the goods and services designated in a trademark registration is revised by the IP Office; sometimes even the concept of a generic term may have changed. Hence the questions: does the protection scope of a trademark registration alter along with such a change? And, will such a change also affect the registrant’s proving of use in a non-use cancellation action? In a recent decision, the Supreme Administrative Court (SAC) addressed these questions and its answers are in the registrant’s favor.  Hsieh v. Regal Scan Tech Co., Ltd., 110 Shang 51, SAC (January 2022).  

In this case, a non-use cancellation action was filed in 2019 against a mark covering “computer hardware, computer software, calculators, cash registers.”  In response to the cancellation action, the registrant submitted evidence of use of the mark on “barcode printers,” asserting that “barcode printer” falls within the concept of “computer hardware.” However, the IP Office did not accept this assertion, because, among other grounds, “barcode printer” and “computer hardware” are categorized in different subclasses in the current Manual of Classification of Goods and Services issued by the IP Office. Per the current Manuel, “barcode printers” belongs to subclass 091703 titled “computer application products,” while “computer hardware” has an eponymous subclass, which is coded 091701. Hence, the IP Office held the mark was not proved to have been used on “computer hardware” and the registration should be cancelled. 

The registrant appealed the IP Office’s ruling to the the Board of Appeals, which partially reversed the IP Office’s decision. The Board found that, at the time the mark was registered in 2004, namely 15 years before the cancellation action was filed, Class 9 had fewer subclasses than it has today.  At that time, “barcode printer” was classified under subclass 0917 which was simply named “computer hardware” and did not have any subclasses.  Further, the Board held that the functions, sales channel of “barcode printers” are not that different from regular printers and other computer hardware devices, so it is only too natural for consumers to consider “computer hardware” as a general denomination for “barcode printer.”

The case was then appealed to the IP and Commercial Court which concurred with the Board’s opinion, and then finally to the SAC. With an expressed intent to protect a good faith registrant, the SAC indicated that, although subclass 0917 was divided into 091701, 091702 and 091703, this revision was made after the registration of the mark in dispute. So, as long as the mark has been genuinely used in goods falling in the new subclass 091703, the use may be deemed to cover subclass 091701 as well, since goods in these subclasses having a same origin are “of similar nature.” 

Hence, the SAC decision implied that, at least in a non-use cancellation action, under certain circumstances, the interpretation of designated goods and services of a trademark can as well be considered in view of circumstances of the time the mark was registered.  Also, the SAC somewhat opened a door for trademark use on a specific goods item to be deemed as use on other goods “of the same nature,” hence releasing registrants’ burden of proof of use in face of non-use cancellation actions.  However, it should be noted that this opinion is not much in line with many of SAC’s previous decisions where, for example, SAC strictly distinguished the nature of “breads” and “cakes,” although both items fall in subclass 300602.


It is still worth further observation whether this new opinion of the SAC will become the mainstream. Although the opinion is very favorable to registrants, it is not perfectly in line with SAC’s previous opinions. Anyway, as unpredictable changes in definition of commodity names constantly occur, it is recommendable for trademark applicants to include in their application both general names and specific names they plan to use for their goods, so as to reduce the risks of protection gap. Also, after having their mark registered, they should review their portfolios from time to time and file new applications to mend any gaps that may have popped up due to changes of circumstances.