Trademarks in Taiwan
A
General Overview
Exclusive
rights to the use of a trademark in Taiwan requires registration
of the mark. The exception is that famous marks, even if unregistered,
may be protected by Taiwan’s Fair Trade Law, and may block the
registration of similar marks in Taiwan, provided that the owner
of the famous mark can prove that the mark was well-known in
Taiwan before the application date of the similar mark. Generally,
U.S. trademark owners are eligible for trademark registration
in Taiwan.
Trademark
owners must apply separately for registration of a mark in each
class in which it is to be used.
I.
Registration Procedure
A
trademark applicant must file an application with Taiwan’s Intellectual
Property Office (TIPO). Normally, the IPO renders a decision
within six months after it receives all supporting documents.
If the application is approved, the mark will be published and
registered after the applicant pays registration fees within
two months upon receiving the approval notice.
II.
Term of Protection
The
term of protection is ten years from the date of registration.
The trademark may be renewed for additional ten year terms within
six months of the expiration date of the mark's present term.
There is also a six-month grace period following expiration
of a mark.
III.
Types of Trademarks
Principal
Mark (including word, drawing, symbol, color, sound, three-dimensional
shape, or combination thereof)
Group
Mark - A mark used by members of a cooperative or association,
such as by union members. These marks are generally used on
goods not sold directly by members of the group.
Certification
Mark - A mark used to identify the quality or characteristics
of products. These marks identify goods as meeting the criteria
of a certifying body, but not the particular source of goods.
Certification marks will not be registered if they are descriptive.
IV.
Unregistrable Marks
Several
types of trademarks are not granted registration in Taiwan.
Among these are marks that are identical or similar to national
flags, marks that are identical with or similar to other registered
marks for the same or similar merchandise, marks that are likely
to lead the public into misidentification or misconception in
respect of the characteristics, quality, or place of origin
of the merchandise, marks that are descriptive of the merchandise
to which they are applied, marks that are identical or similar
to another person’s famous mark thus causing the public to confuse
or misidentify it or diluting the identification or reputation
of the famous mark, and marks which are not distinctive. Suggestive
marks are generally considered to be "descriptive"
by TIPO examiners. For more specific information on marks barred
from registration, please contact our office.
V.
Use Requirements
Use
of a trademark by the registrant or his registered licensee
is mandatory. Non-use for three years immediately following
registration, or continuous suspension from use for three years
may result in cancellation of the registration or deletion of
goods listed on the registration but not actually used. To satisfy
TIPO use requirements, the mark must be used "as a whole",
as registered.
VI.
Licensing
Failure
to record a trademark license agreement with the TIPO may result
in cancellation of the trademark registration. However, the
new trademark law states that TIPO will notify the trademark
owner in writing and give the trademark owner an unspecified
period in which to cure the defect. It should be noted, however,
that the licensee will have no right to enforce the trademark
rights until the license is recorded.
VII.
Actions to Prevent or Revoke Registration of Similar Marks
Oppositions
- Filed within three months after a trademark has been registered
and published, usually on the grounds that the mark is similar
to either another registered mark for the same or similar merchandise,
or to a mark well-known in Taiwan.
Invalidations
- Filed after a mark has been granted registration, on substantially
the same grounds as for oppositions. Identical arguments may
not be used if previously used in an unsuccessful opposition
against the same trademark.
Cancellations
- Filed after a mark has been granted registration, on the grounds
that the trademark owner violated certain trademark regulations
following registration. Such violations might include any of
the following: 1) lack of use of the mark, 2) alteration of,
or addition to, the mark, 3) failure to attach appropriate distinctive
symbols under Article 36, 4) a mark's becoming descriptive of
the name or shape of the designated goods or services, 5) unrecorded
licensing of the mark, or 6) a mark that is likely to lead the
public into misidentification or misconception in respect of
the characteristics, quality, or place of origin of the merchandise,
7) a court judgment finding infringement of another person's
copyright, new design patent, etc., by the trademark.
VIII.
Paths of Appeal
In
the event that the TIPO returns an unfavorable decision on an
application, opposition, invalidation, or cancellation action,
the following paths of appeal may be available:
Appeal
to Ministry of Economic Affairs (MOEA)
Administrative
Suit filed with Administrative High Court
Appeal
to Administrative Supreme Court
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information contained herein is provided by and courtesy of
Wang & Wang. It is for informational purposes only. It should
not and may not be construed as legal advice. Neither transmission
nor receipt of any information contained herein is intended
to nor creates an attorney-client relationship. Any reader of
this information should not act upon it without seeking professional
counsel.
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