When your Taiwan distributor registers your mark: the DT56a case and the five-year limit

1. The short answer

If your Taiwan distributor has registered your mark in its own name, Article 30(1)(xii) of the Trademark Act gives you a ground to seek cancellation of that registration. It bars the registration of a mark identical with or similar to a mark someone else used earlier on identical or similar goods or services, where the applicant knew of that mark through a contractual, regional, business or other relationship and applied with intent to imitate it.

In the DT56a case, the Taiwan Intellectual Property Office (TIPO) cancelled on this ground a registration that a distributor had filed in its own name. The Intellectual Property and Commercial Court dismissed the registrant’s action on November 1, 2024 (113 Xing-Shang-Su No. 19), and the Supreme Administrative Court dismissed the further appeal as inadmissible on June 25, 2025 (114 Shang No. 18).

Two statutory points matter as much as the case itself. First, invalidation on this ground cannot be filed once five years have passed from the date the registration was published (Article 58(1)), and the bad-faith exception in Article 58(2) covers only subparagraphs 9 and 11, not 12. Second, the provision does not apply if the earlier user consented to the application, so what your distribution agreement says, and what it leaves out, can become evidence.

2. What Article 30(1)(xii) says

The provision has four elements and one exception:

• the mark is identical with or similar to a mark that another person used earlier;
• that use was on identical or similar goods or services;
• the applicant knew the earlier mark existed because of a contractual, regional, business or other relationship with that person;
• the applicant applied with intent to imitate the earlier mark;
• exception: the provision does not apply if that person consented to the application.

Whether there was earlier use is decided on the facts at the filing date (Article 30(2)). Any person may file an opposition within three months after the registration is published (Article 48(1)). An interested party may also file for invalidation (Article 57(1)), subject to the five-year limit below. If invalidation is sustained, the registration is cancelled (Article 60).

The court explained why the provision exists: besides protecting trademark owners and consumers, the Act maintains fair competition, and registering a mark you learned of through a special relationship with its user, instead of creating your own, runs against that. Intent to imitate is judged from the objective facts of the contract, location, business dealings or other relationship, applying logic and experience.

3. The DT56a case

An Israeli pharmaceutical company sold a menopause supplement in Taiwan through distributors. “DT56a” was the name of the supplement’s compound formula. The Taiwan distributor registered DT56a as a trademark in its own name. The registration later passed to a Taiwan company which, by its own account, was the distributor’s sole shareholder and took the registration as an asset when the distributor was liquidated. After an unsuccessful administrative appeal, that company sued TIPO, and the court, on its own motion, joined the Israeli company to the action as an intervening party.

Date	Event
June 26, 2012	The brand owner signs an exclusive distribution agreement with an earlier distributor
September 27, 2013	The Taiwan distributor takes over all rights and obligations under that agreement
August 12, 2016	The distributor applies for DT56a for “nutritional supplements” in Class 5; it is registered as No. 01840068
May 21, 2019	Assignment of the registration to the plaintiff is recorded
September 29, 2021	The brand owner files for invalidation under Article 30(1)(xii)
October 31, 2023	TIPO decides that the registration is to be cancelled
February 15, 2024	The administrative appeal is dismissed
November 1, 2024	The Intellectual Property and Commercial Court dismisses the action (113 Xing-Shang-Su No. 19)
June 25, 2025	The Supreme Administrative Court dismisses the appeal as inadmissible (114 Shang No. 18)

4. What the court weighed

Earlier use. The court relied on a photo of a conference poster showing DT56a next to the product’s brand, which matched a photo on the product’s social-media page dated November 19, 2012, and on news reports from June 2013 that showed DT56a with the product’s Chinese brand name. Against the plaintiff’s argument that DT56a was only an ingredient name, the court cited the distributor’s own letter, written in response to a TIPO notice of grounds for refusal while its application was pending. There the distributor had described DT56a as a compound formula the brand owner developed in 2003, not the common name of any formula before the brand owner made and sold it, distinctive, and often shown with the brand’s marks so as to indicate the source of the goods it sold.

Same mark, highly similar goods. Both marks consist of the same letters and digits, DT56a, so they are identical; nutritional supplements and the menopause supplement on which the earlier mark was used are highly similar goods.

Relationship and intent. The distribution agreement showed how the distributor came to know the mark, and the brand owner denied consenting to the application. In the same letter to TIPO, the distributor had said it needed the registration to distribute the brand owner’s goods and would later transfer it to the brand owner; it never did, up to the end of its liquidation. The plaintiff accepted that it had acquired the registration by succession, so, the court said, it took the registration with its rights and its defects (citing Supreme Administrative Court judgment 91 Pan No. 1382). After the distribution relationship ended, the plaintiff ignored the brand owner’s transfer requests and called the matter a contract dispute. On these facts the court found it hard to regard the registration as made in good faith without intent to imitate.

The agreement. The plaintiff relied on clauses 3.2 and 3.3 (registrations or filings for the products to be made in the distributor’s name; the distributor responsible for the registration or filing procedures for its exclusive distribution rights and for import, marketing and distribution) and clause 7.1 (the distributor to ensure that the wording on the packaging complies with the law). The court found that none of them dealt with the right to apply for the trademark or with who owned it, so they did not show consent. Clause 17.1 said the intellectual property in the product line belonged to the brand owner; the brand owner had emails firmly denying consent; and continued supply, or use of the mark while the agreement ran, was not enough to infer consent. The court did not say what “registration” in clauses 3.2 and 3.3 did cover; reading them as product-permit filings is our inference, not part of the holding. It also rejected the plaintiff’s argument that the invalidation was an abuse of rights or contrary to good faith.

The appeal. The Supreme Administrative Court noted that such an appeal may be based only on a violation of law (Administrative Litigation Act, Art. 242). The appeal repeated arguments the lower court had rejected and challenged its findings of fact without stating specifically how the law was violated, so it was dismissed as inadmissible, without a ruling on the merits. As of October 19, 2026, the case history in the Judicial Yuan database lists only these two decisions. In our reading, TIPO’s cancellation stands; we have not seen a separate certificate of finality.

5. The five-year limit

Article 58(1) bars invalidation on several grounds, subparagraph 12 among them, once five years have passed from the date the registration was published. Article 58(2) lifts that limit for bad-faith registrations only under subparagraphs 9 (geographical indications for wines and spirits) and 11 (well-known marks). However plain the distributor’s bad faith, a challenge under subparagraph 12 remains subject to the five years.

In DT56a, the brand owner filed a little more than five years after the application date. The limit runs from publication of the registration, which the judgment does not record, so the case says nothing about how close the filing came. In our reading, the lesson is about timing: an owner who waits for a contract dispute with its distributor to play out can lose subparagraph 12 altogether. After the five years, subparagraph 11 remains open only if the registration was made in bad faith, and the owner must then also make out subparagraph 11 itself, starting with evidence that its mark is well known; whether that can be shown depends on the evidence in each case.

6. What to do in practice

For brand owners, including companies from mainland China selling into Taiwan

1. File in your own name before you appoint a distributor. To obtain a trademark right in Taiwan, you must apply for registration (Article 2). In DT56a, almost three years and nine months passed between the filing for invalidation and the Supreme Administrative Court’s ruling; filing early in your own name is, in most cases, the cheaper course.
2. Deal with trademarks expressly in the distribution agreement. The court gave weight to the ownership clause and read the general registration clauses as silent on the mark. In our reading, the agreement should state who owns the marks, bar the distributor from applying for any of them without your prior written consent, and require assignment on request or at termination, with product-registration clauses kept separate. If you do consent to a filing, consent takes it outside subparagraph 12, and, in our reading, getting the mark back then rests mainly on the contract.
3. Watch the register and diarize both deadlines: three months for opposition and, for a subparagraph 12 invalidation, five years, both counted from publication of the registration.
4. Keep dated evidence of use in Taiwan from launch, and ask for any transfer in writing. The court relied on a conference photo matching a social-media page from 2012 and on news reports from 2013, and it counted the ignored transfer requests against the plaintiff.

For distributors and anyone buying a registration

Registering your supplier’s mark while promising to transfer it, then not transferring it, counted here toward a finding of intent to imitate, and what you write to TIPO during prosecution can be used against you. If you buy a registration from a distributor or take one over in a liquidation, the court’s view was that you take its defects too, so check how it was obtained before you pay.

If a distributor or agent holds your mark in Taiwan and you want to know whether invalidation or a transfer request is still open to you, write to us with the Taiwan registration or application number, the publication date if you have it, the distribution agreement (the intellectual-property, registration and termination clauses), and your earliest dated evidence of use in Taiwan. Our trademark practice page describes the opposition and invalidation work we handle.

7. Related pages

Our Taiwan patent and trademark deadlines page lists the opposition period and the response periods in trademark dispute cases. If you have no domicile or business establishment in Taiwan, our page on the power of attorney covers the document you sign so that an agent can act for you before TIPO. Timing figures for TIPO examination are on how long a Taiwan patent or trademark takes.