A trademark is a word, phase, symbol or combination thereof, that is used by a person in the course of business to identify and distinguish the source of goods or services. Trademarks play important roles in branding and represent a considerable value for the business.

TAIWAN TRADEMARKS

There are 4 kinds of trademarks in Taiwan: Trademark, Certification Mark, Collective Trademark and Collective Membership Mark.

1. Trademark

   
   (Trademark Holder: Ministry of Economic Affairs, R. O. C.)

2. Certification Mark

   
   (Trademark Holder: Council of Agriculture, Executive Yuan ROC)

3. Collective Trademark

   
   (Trademark Holder: ROC Disability Cycling Association)

4. Collective Membership Mark

   
   (Trademark Holder: Tainan Waste Recycle Association)

TYPES OF TAIWAN TRADEMARK

Other than the traditional trademarks such as words, devices, symbols marks, the Taiwan Intellectual Property Office allows registration of non-traditional trademarks, including colour, sound, three-dimensional shape, hologram, motion and scent trademarks.

SHOULD I REGISTER MY TRADEMARK IN TAIWAN?

By registering the mark, the trademark owner will obtain an exclusive right to use the trademark in the designated goods/services. Unregistered trademarks are not protected by the Taiwan laws and it would be extremely difficult to prove that a third party has infringed your trademark rights. Taiwan adopts “first-to-file” registration system and it is recommended to file an application with the Taiwan Intellectual Property Office as soon as you start your business in Taiwan.

HOW LONG DOES IT TAKE TO GET MY TRADEMARK REGISTERED?

The average time it takes to obtain a trademark registration from the Taiwan IP Office is usually about 8 months after filing.

HOW DO I APPLY FOR A TRADEMARK?

Applicants from overseas countries must appoint a trademark agent to act on your behalf when applying for a trademark in Taiwan. A professional trademark agent should be experienced in handling trademark prosecution and relevant IP matters.

CAN I FILE A MULTI-CLASS APPLICATION IN TAIWAN?

Yes, Taiwan allows applicants to file a trademark application in one or more classes. Compare to filing several single class applications, filing a multi-class application can reduce the time and effort. There is only one application/registration date, due date and one application/registration number for the trademark in all classes and it is easier to keep track of your application. However, if one class is subjected to objections/oppositions, the entire application is affected.

WHAT SHOULD I PREPARE FOR A TAIWAN TRADEMARK APPLICATION?

The official language of the Taiwan IP Office is Traditional Chinese and your application must contain:

• Name, nationality and address of the applicant;
• Application Form
• Reproduction of the trademark
• List of designated goods or services (Description and Class of Goods/Services)
• Other required documents e.g. Power of Attorney, priority documents, and their Chinese translations if the documents are not in Chinese.

If the applicant wishes to claim the right of priority, the Taiwan application shall be submitted within 6 months after the date of filing of the first application. After submission of the application, the Taiwan IP Office gives the application a filing date and an application number after filing.

WHAT ARE THE NEXT STEPS?

1. Formality Examination

   After filing the initial application, the Taiwan IP Office will conduct “Formality Examination” to check if the application can satisfy the formality requirements.

2. Substantive Examination

   The Taiwan IP Office examines the application on absolute and relative grounds and will refuse your trademark application if it is believed to not to fulfil the below requirements.

   Absolute Grounds for Refusal of Registration
   Distinctiveness is a vital requirement for registration of a trademark. A trademark shall not be registered in any of the followings:

   • Descriptive - the mark merely describes the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;
   • Generic - the mark consists exclusively of the generic mark or term for the designated goods or services; or
   • The mark consists exclusively of other signs which have no inherent distinctiveness;
   • Other reasons e.g. the mark is identical with or similar to the national flag, emblem, seal or the state flags of ROC (Taiwan) and foreign countries; being contrary to public policy or to accepted principles of morality.

   Relative Grounds for Refusal of Registration
   Relative grounds for refusal of registration are the grounds for refusal when the trademark application conflicts with other earlier trademarks (prior marks). In most of the cases, registered trademarks with a certain reputation have broader rights than other unregistered marks or marks that are not famous. A trademark shall not be registered in any of the followings:

   • the trademark is likely to mislead the public as to the nature, quality or place of origin of the goods/services;
   • the trademark is identical or similar to earlier trademarks in which the goods/services are also identical or similar, and is likely to mislead the relevant consumers
   • the trademark is similar to a well-known trademark, causing likelihood of confusion on the relevant public
   • Other reasons e.g. the trademark contains the name of a well-known person, juridical person or business and hence there exists a likelihood of confusion on the relevant public.

   During the examination, the Taiwan IP Office Trademark Examiner will search for prior registered trademarks that are similar to the trademark application. The Trademark Examiner will issue an Office Action to the applicant if the trademark cannot be registered. The applicant has an opportunity to present arguments or make amendments to the description of goods/services. In most of the cases, the applicant is given one or two attempts to overcome all outstanding objections.

   Trademark Disclaimer
   If the Trademark Examiner finds the trademark contains any descriptive or non-distinctive word or figure, the applicant may choose to make a disclaimer to indicate that the trademark holder does not claim any exclusive use to the indistinctive portion(s) of the trademark.

3. Registration

   Once the Taiwan IP Office finds that the application is allowable, the examiner will issue an Approval Decision. The applicant shall pay the registration fee within 2 months. The IP Office then grants and publishes the trademark in the Trademark Gazette. The trademark certificate will also be sent to the applicant.

4. Opposition

   After the Taiwan IP Office approves the trademark registration and publishes the trademark in the gazette, there is a 3-month opposition period. Anyone can file an opposition request within the period. The opposition can be based on reasons such as the trademark is descriptive of the goods/services, the trademark is considered generic for those goods/services, or the trademark is similar to or identical with an earlier registered trademark.

5. Renewal

   The term of trademark in Taiwan is 10 years from the registration date. After the trademark is registered, the applicant should pay the renewal fees starting from 6 months before the trademark expires in order to keep the trademark alive.

HOW WE CAN HELP

Our trademark team is experienced in all aspects of obtaining and protecting a trademark, from trademark prosecution to handling infringements, appeals and litigations before the Taiwan IP Office and the courts. We are capable to give you the most secure protection on your trademark and intellectual property rights. Contact us if you wish to find out more about IP protection.

TAIWAN TRADEMARK APPLICATION PROCESS