Trademarks

The Trademark Act.

Through registration.

The Trademark Act, the Enforcement Rules of the Trademark Act and various examination guidelines published by the Taiwan IP Office.

Any sign that is distinctive, which may in particular consist of words, devices, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination thereof.

Distinctiveness is the primary requirement, which refers to a sign that is capable of being recognised by relevant consumers as an indication of the source of goods or services, and of distinguishing the goods or services of one undertaking from those of others.

A trademark shall not be registered if it is devoid of distinctiveness, as follows:

• The trademark comprises or incorporates an indication which is descriptive of the quality, intended use, raw material, place of origin or related characteristics of the designated goods or services;
• The trademark comprises or incorporates a generic term or name referring to the designated goods or services; or
• The trademark comprises or incorporates other non-distinctive indications, such as slogans, company names or model numbers.

The Taiwan IP Office.

An application filing fee and a registration fee.

Yes.

‘Class-wide’ applications are not allowed; the relevant goods and/or services must be specified.

No.

Yes.

Distinctiveness and public policy (see question 3.8).

Yes. The grounds for refusal of registration regarding public policy include the following:

• The mark is identical or similar to the national flag, national emblem, national seal, military flags, military insignia, official seal or medal of Taiwan, or the state flag of a foreign country, or the armorial bearings, national seal or other state emblem of a foreign country communicated by any member of the World Trade Organization under Article 6ter, paragraph 3 of the Paris Convention;
• The mark is identical to the portrait or name of Dr Sun Yat-Sen or other head of the state;
• The mark is identical or similar to the mark of a government agency of Taiwan, an official exhibition held thereby or a medal or certificate awarded thereby;
• The mark is identical or similar to the armorial bearings, flag, other emblem, abbreviation or name of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for the public interest, and hence is likely to mislead the public;
• The mark is identical or similar to an official sign or hallmark indicating control or warranty adopted by a domestic or foreign country and designated for identical or similar goods or services;
• The mark is contrary to public policy or to accepted principles of morality; or
• The mark is likely to mislead the public as to the nature, quality or place of origin of the goods or services.

No.

Yes, but such protest is only for the examiner’s reference.

No.

Five to seven months.

Eight to twelve months.

Yes. An appeal can be filed with the Board of Appeals of the Ministry of Economic Affairs.

The applicant shall submit an appeal along with a written brief, the Taiwan IP Office decision refusing registration and other supporting materials. Generally, the Board of Appeals will review the appeal based on the brief and evidence submitted. The board sometimes holds oral hearings where deemed necessary.

Yes. The Board of Appeals’ decision may be appealed through a trial before the IP Court.

Yes.

Any third party.

Within three months of the publication/registration date of the trademark (publication and registration occur on the same day).

The Taiwan IP Office (TIPO).

Opposition proceedings in Taiwan are conducted on a pleading and defence basis, whereby the two parties are allowed to alternately present their arguments in written form. Upon receipt of a brief/counterstatement lodged by one party, TIPO will serve a copy thereof on the other party along with a notification for response before a designated deadline, which is generally within 30 days. This procedure will continue until the two parties have exhausted their views and have no further observations or new evidence to file.

Yes; see questions 4.2 and 4.3.

An unregistered trademark is not protected unless it is a well-known trademark under the Fair Trade Act.

The owner of a registered trademark has the exclusive right to use the trademark in relation to the designated goods or services.

The advance consent of the owner of a registered trademark is required in order to:

• use a mark which is identical to the registered trademark in relation to goods or services which are identical to those for which it is registered;
• use a trademark which is identical to the registered trademark in relation to goods or services which are similar to those for which it is registered, in a way which may create a likelihood of confusion for relevant consumers; or
• use a trademark which is similar to the registered trademark in relation to identical or similar goods or services to those for which it is registered, in a way which may create a likelihood of confusion for relevant consumers.

No.

• Cessation or prevention of the infringement;
• Destruction of infringing articles and materials or implements used in the infringing acts; and
• Compensation for damages.

Protection against dilution is available exclusively for well-known trademarks. Registrants can demand that dilution be stopped or prevented.

The following actions are considered to constitute trademark infringement and are thus prohibited:

• knowingly using words that are incorporated in another party’s well-known registered trademark as the name of a company, business, group or domain, or in any other name that identifies a business entity, in a way which creates a likelihood of confusion for relevant consumers or a likelihood of dilution of the distinctiveness or reputation of that well-known trademark; and
• manufacturing, possessing, displaying, selling, exporting or importing labels, tags, packaging or containers that have not been applied in relation to goods or services, or articles that have not been applied in relation to services, knowing that such articles would likely infringe trademark rights.

• Filing a civil action against the infringer; and/or
• Filing a criminal complaint with the police or a prosecutor.

• No likelihood of confusion;
• Invalidity of the trademark registration;
• Fair use;
• Prior good-faith use; and
• Doctrine of international exhaustion.

A decision in trademark litigation may be appealed to the IP Court at second instance. In civil cases, a case may be appealed to the Supreme Court at third instance.

The initial term of registration is 10 years and the trademark may be renewed indefinitely for subsequent 10-year terms thereafter.

The application form for renewal and the renewal fee.

• The trademark has been altered by the owner in a different form from that in which it was registered, or has been supplemented with additional notes and is now identical or similar to a third party’s trademark which is registered for the same or similar goods or services, and there is thus a likelihood of confusion among relevant consumers;
• The trademark has not yet been put to use or use of the trademark has been suspended for a continuous period of not less than three years, without proper reasons, unless the trademark has been put to use by a licensee;
• No appropriate and distinguishing indication has been added where two or more owners use identical trademarks for similar goods or services, or similar trademarks for identical or similar goods or services, due to the transfer of trademark rights, and there is thus a likelihood of confusion among relevant consumers, unless such indication is duly added before the Taiwan IP Office issues an order for revocation;
• The trademark has become a generic mark or term, or a common shape, for the designated goods or services; or
• As a consequence of actual use of the trademark, it is likely to mislead the public as to the nature, quality or place of origin of the goods or services.

On all of the grounds listed in question 8.3.

Cancellation proceedings in Taiwan are conducted on a pleading and defence basis, whereby the two parties are allowed to alternately present their arguments in written form. Upon receipt of a brief/counterstatement lodged by one party, TIPO will serve a copy thereof on the other party along with a notification for response before a designated deadline, which is generally within 30 days. This procedure will continue until the two parties have exhausted their views and have no further observations or new evidence to file.

It usually takes six months for TIPO to render its decision.

See questions 4.2 and 4.3.

No.

Recordal is not compulsory, but is recommended for the licence to have effect against third parties.

No.

If the foreign trademark is a well-known trademark, it will be protected under Fair Trade Act.

No.