Taiwan: GI Protection In Taiwan

In Taiwan, a Geographical Indication (GI) may be registered as a certification mark or a collective trademark to be protected under Taiwan's Trademark Law.

In general, a GI certification mark is used to certify the place of origin of the designated goods or the place where the designated service is provided, suppose the certified goods or service has a specific quality, reputation or other identifiable characteristics owing to geographical factors. That is, the claimed quality, reputation, or other characteristics need be either related to the geographical features of that region, being attributable to, for example, the soil, climate, wind, water quality, elevation, humidity in that region, or related to a manufacturing process, production method, or manufacturing technique that is traditionally or uniquely employed in that region. Generally speaking, GI certification marks typically apply to agricultural products, food products, wines, spirits, and handicrafts.

On the other hand, a GI collective trademark serves as an indication of the goods or services as being provided by a member of a particular group from a specific place of origin, suppose the goods or services have a specific quality, reputation or other identifiable characteristics. Such characteristics must be related to the geography of that place.

The applicant of a GI certification mark shall be a legal entity, a legal group or a government authority. To file an application of GI certification mark, in addition to a reproduction of the mark and the list of goods or services to be certified, the Applicant is required to submit the following documents:

1. A document able to prove the applicant's qualification or competence to certify goods or services. Where the Applicant is a foreign legal entity, a legal group, or a governmental authority, a document proving that the GI certification mark has obtained protection in the Applicant's name in its home country shall be submitted as well.
2. The rules governing use of the certification mark with respect to:
3. 1. the characteristics to be certified by the certification mark;
   2. the condition on the use of the certification mark specifying the scope of the geographical origin certified by the geographical certification mark and stating (i) the specific quality, reputation, or other characteristics the goods or services possess; (ii) how those characteristics are related to the geography of the place; and (iii) manner of use and fees for the use of certification mark;
   3. the method of managing and supervising the use of the certification mark; and
   4. the procedures for applying to use the certification mark and resolving disputes thereof.
3. A declaration to the effect that the Applicant itself does not engage in the manufacture or sale of goods and provision of services under the GI certification mark.

The Applicant of a collective trademark shall be a union, an association, or other group having legal capability. To file an application of GI collective trademark, in addition to a reproduction of the mark and the list of the designated goods or services, the Applicant shall submit the following documents:

1. A certified copy of the Certificate of Organization/Association issued by a competent authority. If the Applicant is a foreign union, an association, or other group, a document proving that the collective trademark has obtained protection in the Applicant's name in its home country shall be submitted.
2. A guideline setting out regulations governing use of the collective trademark, including:
3. 1. the qualifications of the membership;
   2. the condition on the use of the collective trademark specifying the scope of the geographical origin and stating (i) the specific quality, reputation, or other characteristics the goods or services possess; (ii) how those characteristics are related to the geography of the place; and (iii) manner of use and fees for the use of collective trademarks;
   3. the method of managing and supervising the use of the certification mark; and
   4. provisions against any violation of the regulations.

After filing a certification mark/collective trademark application, the Registrar will conduct a formality examination and issue an Official letter to require amendments/supplements in case of any deficiencies in the documents submitted. Once the formality requirements are fulfilled, the Registrar will proceed to conduct a substantive examination. It generally takes about 8 to 12 months for an application to go through the examination procedure if it is prosecuted smoothly. Upon payment of the registration fee within two months of receipt of the Notice of Allowance, the Trademark Office will announce registration of the mark and issue the Certification of Registration.

The following GIs have been registered as certificate marks in Taiwan:

The following GIs have been registered as collective trademarks in Taiwan:

Regulations of GI certification marks and collective trademarks are provided in the Trademark Law, the Enforcement Rules of the Trademark Law, and the Examination Guidelines concerning Certification Marks, Collective Membership Marks and Collective Trademarks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.