1. Why register a trademark?
Trademarks should be registered for both protection and commercial reasons. Registration is prima facie evidence of ownership and validity. Taiwan follows a first-to-file rule, and failure to file a mark can allow others to register an identical or similar mark, which could restrict the ability to register and use a mark in Taiwan. A mark can also have a value to its owner, and, over time, can build its own goodwill.
2. Is registration of a mark mandatory?
There is no legal requirement to register a mark, but most rights against infringers are generally acquired and easier to enforce as a result of a registration. The owners of unregistered well-known marks can resort to the stringent processes available under the Fair Trade Law for protection, but others with unregistered marks will find it difficult to obtain rights, and prevent others from using the mark.
3. What is registrable?
Since the implementation of the new Trademark Law, as of November 28, 2003, any distinctive word, character, drawing, symbol, color, name, device, picture, color, sound, three-dimensional shape or combination thereof, may be registered as a mark for goods or services, and in any language.
4. Can a trademark be registered for retail and like services?
It is possible in Taiwan to register a trademark for retailing services in Class 35.
5. How are domain names protected?
Any word trademark can be registered as a domain name in Taiwan, and it is now permitted for foreign applicants to register domain names, using local agents, if they have no local company or branch office in Taiwan. With respect to cancellation, one of the grounds for requesting the cancellation or transfer of a registered domain name is that the complaining party has a trademark registration that is identical or similar to the registered domain name of a third party, thus causing public confusion. A new dispute procedure has now been established in Taiwan to deal with such matters, and details are available from local trademark agents.
6. Should a trademark be searched before filing?
It is not absolutely necessary to conduct a search for a mark before filing. However, if the mark is to be used in Taiwan right away, conducting a search may preclude the risk of infringement. Most trademark agents can complete a search before filing to determine if the same or a similar mark has been registered previously. Such prefiling searches can save the costs of filing of an application, if the same or a similar mark has already been registered. This is particularly valuable if a large number of international filings using a particular mark will take place, or if major marketing campaigns and product development will be based on the use of a mark. After filing, marks applied for will be officially searched, but this is usually several months after the submission of the application. Some applicants also search to ensure that the new proposed trademark does not conflict with any existing names of companies or corporations registered in Taiwan.
7. How do I file?
A local trademark agent, instructed by overseas trademark agents, or any other party, may submit applications. Application forms are submitted in Chinese. Required are full details of the applicant, the proposed mark, and the goods/services that are proposed to be covered by the new mark. Documents, such as a power of attorney, must be signed by the applicant to appoint the local trademark agent. Such documents are available from the agents, on request.
8. What information must be provided before filing?
Before filing, an applicant must provide prints of the mark unless the mark can be represented in plain block capital letters, full details of the applicant and specification of goods/services. In case priority is to be claimed, the filing date of the corresponding foreign application and the country in which it was filed also must be provided.
9. Is local registration the only option, or are there international alternatives?
There are no international alternatives.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
As of the implementation of the new Trademark Law on November 28, 2003, multiclass applications are allowed.
11. Is it possible to take advantage of a home application or registration?
A foreign applicant is not required to file a new application in Taiwan on the basis of his home application. It is possible for a foreign applicant whose country of origin is a WTO member to claim priority from his first-filed home application for a corresponding application filed in Taiwan within six months of the day following the date on which the home applicaiton was filed.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
Whenever, without justifiable cause, the trademark is not used within three years after registration or, after a period of use, use of the mark is discontinued for a term in excess of three successive years, the IP Office may, ex officio, or at the request of a third party, cancel the right to the exclusive use of the mark.
13. Is using a variation of the trademark allowable?
Use of a variation of the registered trademark is not allowable unless the variation contains only a slight modification of the mark such that general consumers would still consider the modified mark to be the same as the registered mark. As of the implementation of the new Trademark Law on November 28, 2003, the inter-association system will be abolished and all the associated marks registered prior to Novemnber 28, 2003 will be converted into independent marks the use of which shall no longer inure to the benefit of their inter-associated marks.
14. Is there any advantage to using a trademark before filing an application?
Taiwan follows the first-to-file doctrine and, as a general rule, use prior to filing does not provide any advantage. However, prior use may be asserted in opposition or invalidation proceedings and may be raised as a defense in infringement proceedings, under certain conditions.
15. For an application to be valid, are there any particular requirements that must be met?
Formality requirements that have to be satisfied include the submission of a power of attorney, and details of the goods/services to be covered by the mark. Prints of the mark should also be submitted.
16. What information is first published about an application/ registration and when is it published?
Once a trademark application is allowed and payment of the registration fee is effected, the trademark will be registered and published. The information published includes registration number, the date of filing, priority date (if any), the application number, the name of the applicant, class, specification and a representation of the mark, and the nationality of the applicant.
17. What kind of examination (if any) will a new application undergo?
A new application is first examined as to formalities with regard to requisite documents and the specification of goods/services. Then the application is examined to ensure compliance with local rules as to distinctiveness and deceptiveness. A search is conducted for prior conflicting identical or similar marks that may be cited against the new application. If any problems are identified, then the examiner dealing with the case will raise official objections and the response time for these is usually 30 days, with an extension being available on request.
18. What response to official objections is required?
The response time to official objections is normally 30 days, but extensions may be granted. In the case of an official letter of a tentative decision to reject the application due to an earlier registration, the applicant might (1) file an argument for the dissimilarity between the marks at issue and/or between the respective designated goods/services; (2) limit the goods or services so as not to conflict with the earlier cited registration; or (3) submit a letter of consent to overcome a citation objection except where the two marks at issue are identical and the designated goods/service are the same.
19. How long is the registration process?
The whole registration process can take approximately 10 to 16 months to complete.
20. What rights does an application confer?
An application can be cited against a subsequent conflicting application. It also entitles the applicant to oppose subsequent applications.
21. What is the legal effect of a registration?
On registration, a trademark right is created, which allows the registrant to oppose subsequent trademark applications that are identical or similar, cancel other subsequent registrations, take action against unauthorized third-party use and seizure of goods, and possibly seek an injunction to prevent unauthorized use.
22. Can an application be opposed or cancelled by third parties?
If the application is approved after official examination and payment of registration fee is effected, the mark will be registered and published. A third party has the right to oppose the registration of the new mark within three months of the publication date, usually based on the existence of a prior, similar mark in respect of the same or relevant goods, or a well-known mark. Cancellation of a registered mark can be filed by a third party on the basis of the grounds set out in the trademark law, including nonuse for three consecutive years during its ten-year duration term. Invalidation of a registered mark can be filed by an interested party on bases including a prior or well-known mark or the mala fide of the registrant.
23. Can an application or registration be assigned?
Both a pending application and a registered trademark may be assigned, and any associated mark, which will be disassociated from its principal mark, can be transferred independently.
24. Must an assignment include goodwill?
The assignment can be with or without goodwill.
25. Does an assignment have to be recorded?
No, however assignments must be officially recorded to be valid against third parties.
26. Can an application or registration be licensed?
Recordal of a trademark license with the IP Office in Taiwan can only be made after the licensed trademark has been registered.
27. Does a license have to be recorded?
No. However, if a license is not recorded the licensee is not entitled to enforce the trademark right.
28. What is the territorial limit of a registration?
A trademark registered in Taiwan is only valid within Taiwan.
29. How long does a registration last?
The term of a trademark registration is ten years from the registration date.
30. What is required to renew a registration?
A power of attorney and payment of the official fees for the renewal are required. Trademarks can be renewed for further ten-year periods, with renewal applications being permitted six months prior to the expiry date, or within six months after the expiry date, but with double the official fees for the renewal being payable in the latter case.
31. Is it necessary to indicate a trademark registration on goods or services?
This is optional. If it is desired, then either 揜egistered Trademark?in Chinese characters or ?are appropriate for use.
32. Does the International Classification System apply?
The International Classification System is applicable to Taiwan, with slight variations according to local practice rules adopted by the IP Office.
33. Is your national office accessible online?
While the IP Office is accessible online at http://www.tipo.gov.tw, electronic filing is not yet acceptable. |
