Trademark Law in Taiwan
With an office in Taipei, Wang & Wang is able to assist international clients with the registration and protection of trademarks in Taiwan. 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.
- Registration Procedure
- Term of Protection
- Types of Trademarks
- Unregistrable Marks
- Use Requirements
- Actions to Prevent or Revoke Registration of Similar Marks
- Paths of Appeal
A trademark applicant must file an application with Taiwan's Intellectual Property Office ("TIPO"). Normally, the TIPO 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.
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.
Types of Trademarks
Taiwan law distinguishes among three 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 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)
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 that 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.
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.
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.
Actions to Prevent or Revoke Registration of Similar Marks
Trademark registration may be prevented or revoked in certain situations:
- 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, but not where the same arguments have previously failed in opposition to the same mark.
- 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; (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; or (7) a court judgment finding infringement of another person's copyright, new design patent, etc., by the trademark.
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