taiwan trademark assignment

Trade Mark Laws and Regulations Taiwan 2024

ICLG - Trade Mark Laws and Regulations - Taiwan Chapter covers common issues in trade mark laws and regulations – including legislation, application, refusal, opposition and registration.

Chapter Content Free Access

1. relevant authorities and legislation, 2. application for a trade mark, 3. absolute grounds for refusal, 4. relative grounds for refusal, 5. opposition, 6. registration, 7. registrable transactions, 8. revocation, 9. invalidity, 10. trade mark enforcement, 11. defences to infringement, 14. border control measures, 15. other related rights, 16. domain names, 17. current developments.

1.1       What is the relevant trade mark authority in your jurisdiction?

The relevant trade mark authority is the Taiwan Intellectual Property Office (TIPO).

1.2       What is the relevant trade mark legislation in your jurisdiction?

The Taiwan Trademark Act (Trademark Act) was first enacted and promulgated on May 6, 1930.

The current Trademark Act was amended and promulgated on November 30, 2016 and became effective on December 15, 2016.

2.1       What can be registered as a trade mark?

Any sign with distinctiveness, which may consist of words, designs, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination thereof, can be registered as a trade mark.

2.2       What cannot be registered as a trade mark?

There is no sign that would be refused registration in Taiwan so long as it is distinctive enough.

2.3       What information is needed to register a trade mark?

The following information is needed:

• A scanned copy of the Power of Attorney.
• Specification of goods/services sought for registration.
• The filing date and application number of the corresponding priority application (if priority is claimed pursuant to the corresponding World Trade Organization (WTO) member country’s trade mark application).
• A scanned copy of the certified copy of the corresponding priority application (if priority is claimed pursuant to the corresponding WTO member country’s trade mark application).
• The date of the first display of the goods or services and the name of the exhibition (if priority is claimed pursuant to the exhibition).
• The exhibition priority document (if priority is claimed pursuant to the exhibition).
• A print (not less than 5cm and not exceeding 8cm in length and width) of the mark.

2.4       What is the general procedure for trade mark registration?

The trade mark registration procedure and estimated timeframe are provided below:

• The applicant files the application.
• It takes approximately nine months to receive an official decision.
• The registration fees must be paid within two months from the day after the approval decision has been received.
• It takes approximately one month to receive the registration certificate after the payment of the registration fees.

2.5       How is a trade mark adequately represented?

Traditional trade marks:

• A traditional trade mark should be presented in a still, two-dimensional image. Non-traditional trade marks:
• Three-dimensional trade mark: Such mark should be presented by views depicting the three-dimensional shape of the trade mark.  The applicant shall furnish a description explaining the three-dimensional shape.  The reproduction may use broken lines to show the manner, placement or context in which the trade mark is used on the designated goods or services with a description explaining such broken lines.
• Colour trade mark: Such mark does not have to be claimed using an internationally recognised colour code and can be presented by a sample of the colour(s).  The reproduction may use broken lines to show the manner, placement or context in which the colour is, or the colours are, used on the designated goods or services.  The matter shown by the broken lines is not part of the trade mark.  The applicant shall furnish a description explaining such broken lines.
• Sound trade mark: Such mark should be represented by a musical notation on a stave, numeric music score or written explanation.
• Motion trade mark: Such mark can be presented by still images of the varying process of the moving images.  The applicant shall furnish a description explaining the movement in sequential order.
• Hologram trade mark: Such mark can be presented by the perspective drawing(s) of the hologram.  The applicant should provide a description stating the hologram.  For a hologram that generates different representations because of different perspective views, the description should include the changes of the different perspective drawings.
• Repeating-pattern trade mark: Such mark can be presented by the pattern structure and serial arrangement.  Also, the trade mark may be displayed in dotted lines showing the manner, position or context it is used on the designated goods or services; in particular, how the repeating-pattern trade mark is used on a specific portion of goods indicating the actual use should be clearly explained in the trade mark description; however, the dotted lines should not be part of the trade mark.
• Smell trade mark: Such mark should be presented in written explanation.  The applicant may submit product samples, product packages, and articles related to the services provided in actual use, or test papers with the smell, etc., as the specimens of a smell trade mark applied for registration.
• Position trade mark: Such mark can be presented by broken lines to show the position where the trade mark is actually applied on the goods or services, and a clear description of the trade mark itself and how and where the trade mark is used on the goods or services.

2.6       How are goods and services described?

Goods and services are classified according to the Nice Classification system.  Most of the class headings will be considered too broad/indefinite in meaning to be acceptable for registration purposes; it is necessary to specify the goods or services.  It is not permissible to claim “all goods in class”.

2.7       To the extent ‘exotic’ or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?

The measures required to file non-traditional trade marks are given in question 2.5.  In filing an application for registration of other non-traditional trade marks that are not given in question 2.5, the applicant must furnish the reproduction of the proposed trade mark.  If the reproduction does not clearly and completely present the trade mark, a description or even specimen(s) thereof should be provided in order to precisely define the scope of the rights and to enable third parties to ascertain the registered trade mark and its scope of rights according to the publication of the trade mark registration.

2.8       Is proof of use required for trade mark registrations and/or renewal purposes?

Proof of use is not required for such purposes.

2.9       What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

A trade mark registered in Taiwan can only be protected in Taiwan.

2.10    Who can own a trade mark in your jurisdiction?

Any juridical or natural person, business or group can own a Taiwanese trade mark.

2.11    Can a trade mark acquire distinctive character through use?

A trade mark can acquire distinctive character through use.  Generally speaking, it needs at least three years of use and advertising in Taiwan to acquire distinctive character.

2.12    How long on average does registration take?

It takes about 10 months from filing to registration if there is no objection from the examiner.

2.13    What is the average cost of obtaining a trade mark in your jurisdiction?

In addition to attorneys’ fees, the official fees (NT$) for one application in one class are quoted below:

Filing fees

• NT$3,000.00 if the designated goods are under 20 items; and
• NT$200.00 for each additional item if over 20 items.
• NT$3,000.00; and
• NT$500.00 for each additional service if in excess of five services in subclass “retail services of specific goods” in class 35.

Registration fees

• NT$2,500.00

2.14    Is there more than one route to obtaining a registration in your jurisdiction?

Except by filing an application in Taiwan, there is no other route to obtaining a registration in Taiwan.

2.15    Is a Power of Attorney needed?

A scanned copy of the Power of Attorney (simply signed by an authorised person) is required.

2.16    If so, does a Power of Attorney require notarisation and/or legalisation?

Neither notarisation nor legalisation is required.

2.17    How is priority claimed?

The following documents and information are needed to claim priority pursuant to the corresponding WTO member country’s trade mark application:

• Filing date and application number of the corresponding priority application: Must be stated at the time of filing the Taiwanese application.
• A certified copy of the corresponding priority application: must be submitted within three months after the Taiwanese application is filed; an extension of time to file the certified copy is not permitted.

The following documents and information are required to claim priority pursuant to the exhibition:

• The date of first display of the goods or services and the name of the exhibition: must be stated at the time of filing the Taiwanese application.
• Exhibition priority document: must be submitted within three months after the Taiwanese application is filed; an extension of time to file the priority document is not permitted.

2.18    Does your jurisdiction recognise Collective or Certification marks?

Taiwan recognises Collective and Certification marks.

A Collective trade mark is a sign that serves to indicate goods or services of a member in an association, society or any other group that is a juridical person and to distinguish goods or services of such member from those of others who are not members.

A Certification mark is a sign that serves to certify a particular quality, accuracy, material, mode of manufacture, place of origin or other matters of another person’s goods or services by the proprietor of the Certification mark, and to distinguish the goods or services from those that are not certified.  Only a juridical person, group or government agency that is competent to certify another person’s goods or services is eligible to apply for registration of a Certification mark.

3.1       What are the absolute grounds for refusal of registration?

The principal absolute grounds for refusal of registration are provided below:

• A trade mark that is non-distinctive.
• A trade mark that is exclusively necessary for the goods or services to be functional.
• A trade mark that is identical or similar to the national flag, national emblem, national seal, military flags, military insignia, official seals, or medals of the Republic of China (ROC), or the state flags of foreign countries, or the armorial bearings, national seals or other state emblems of foreign countries communicated by any member of the WTO under paragraph 3 of Article 6 ter of the Paris Convention.
• A trade mark that is identical to the portrait or name of Dr. Sun Yat-sen or the head of state.
• A trade mark that is identical or similar to the mark of a government agency of the ROC or an official exhibition held thereby, or the medal or certificate awarded thereby.
• A trade mark that is identical or similar to the armorial bearings, flags, other emblems, abbreviations, and names of international intergovernmental organisations or well-known domestic or foreign institutions undertaking business for public interest, and hence likely to mislead the public.
• A trade mark that is identical or similar to official signs and hallmarks indicating control and warranty adopted by domestic or foreign countries, and designated to identical or similar goods or services.
• A trade mark that is contrary to public policy or to accepted principles of morality.
• A trade mark that is likely to mislead the public as to the nature, quality, or place of origin of the goods or services.
• A trade mark that is identical or similar to a geographical indication for wines or spirits in the ROC or a foreign country, and is designated to goods that are identical or similar to wines or spirits, where that foreign country concludes with the ROC an agreement, or accedes to an international treaty, to which the ROC also accedes, or has reciprocal recognition with the ROC of protection of geographical indications for wines or spirits.
• A trade mark that is identical or similar to another person’s registered trade mark or earlier filed trade mark and to be applied for goods or services identical or similar to those for which the registered trade mark is protected or the earlier filed trade mark is designated, and hence there exists a likelihood of confusion of relevant consumers, unless the consent of the proprietor of said registered trade mark or earlier filed trade mark to the application has been given and is not obviously improper.
• A trade mark that is identical or similar to another person’s well-known trade mark or mark, and hence there exists a likelihood of confusion of the relevant public or a likelihood of dilution of the distinctiveness or reputation of said well-known trade mark or mark, unless the proprietor of said well-known trade mark or mark consents to the application.
• A trade mark that is identical or similar to another person’s earlier used trade mark and to be applied for goods or services identical or similar to those for which the earlier used trade mark is applied, where the applicant, with the intent to imitate the earlier used trade mark, being aware of the existence of the earlier used trade mark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trade mark, files the application for registration, unless the proprietor of said earlier used trade mark consents to the application.
• A trade mark that contains another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless said person consents to the application.
• A trade mark that is identical or similar to the name of a well-known juridical person, business or any group, and hence there exists a likelihood of confusion of the relevant public, unless said juridical person, business or group consents to the application.
• A trade mark that is an infringement of another person’s copyright, patent right, or any other right, where a final judgment of the court has been rendered, unless said person consents to the application.

3.2       What are the ways to overcome an absolute grounds objection?

An absolute grounds refusal can be overcome through argument, acquired distinctiveness through use, and/or obtaining a letter of consent.

3.3       What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A decision can be appealed in its entirety.

3.4       What is the route of appeal?

The route of appeal is as follows:

• In disagreement with the TIPO’s decision, an initial appeal may be filed with the Ministry of Economic Affairs (MOEA) within 30 days, counting from the day after the TIPO’s decision has been received.
• In disagreement with the MOEA’s decision, an administrative suit may be instituted with the Intellectual Property and Commercial Court (IPCC) within two months, counting from the day after the MOEA’s decision has been received.
• In disagreement with the IPCC’s judgment, an ultimate appeal may be instituted with the Supreme Administrative Court within 20 days, counting from the next day after the IPCC’s judgment has been received.

4.1       What are the relative grounds for refusal of registration?

With respect to the examination of an application for trade mark registration, Taiwan adopts the “comprehensive examination system”, which means that the trade mark authority ex officio examines all grounds for refusal including grounds regarding conflicting trade marks that involve only private interests.

4.2       Are there ways to overcome a relative grounds objection?

An objection can be overcome by argument, limiting the specification, a letter of consent, and/or invalidating the earlier mark.

4.3       What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

4.4       What is the route of appeal?

Please see question 3.4.

5.1       On what grounds can a trade mark be opposed?

The principal grounds for opposition are given below:

• A trade mark that is identical or similar to another person’s registered trade mark or earlier filed trade mark and to be applied for goods or services identical or similar to those for which the registered trade mark is protected or the earlier filed trade mark is designated, and hence there exists a likelihood of confusion of relevant consumers.
• A trade mark that is identical or similar to another person’s well-known trade mark or mark, and hence there exists a likelihood of confusion of the relevant public or a likelihood of dilution of the distinctiveness or reputation of said well-known trade mark or mark.
• A trade mark that is identical or similar to another person’s earlier used trade mark and to be applied for goods or services identical or similar to those for which the earlier used trade mark is applied, where the applicant, with the intent to imitate the earlier used trade mark, being aware of the existence of the earlier used trade mark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trade mark, files the application for registration.

5.2       Who can oppose the registration of a trade mark in your jurisdiction?

Anyone can oppose the registration of a Taiwanese trade mark.

5.3       What is the procedure for opposition?

The procedure is as follows:

• The opposer files the opposition.
• The TIPO notifies the trade mark registrant to submit a defence within a certain time limit (normally 30 days).
• The trade mark registrant submits a defence.
• The TIPO notifies the opposer to submit supplementary opposition reasons within a certain time limit (normally 30 days).
• The TIPO issues a decision.
• The opposition is finalised if no appeal is filed.

6.1       What happens when a trade mark is granted registration?

The registration fees must be paid within two months from the day after the approval decision has been received.  The trade mark will be registered and published after payment of the registration fees, and a registration certificate will then be issued.

6.2       From which date following application do an applicant’s trade mark rights commence?

Trade mark rights in Taiwan commence from the date of registration.

6.3       What is the term of a trade mark?

The term of a trade mark is 10 years.

6.4       How is a trade mark renewed?

Renewal will be granted upon the filing of a renewal application and payment of the official fees.

In addition to attorneys’ fees, the official fee for one application for renewal of one registration in one class is NT$4,000.00.

The renewal application shall be made within six months before the expiration of its period.  However, it is permitted to pay twice the official fees for renewal within six months after the expiration of the period.

7.1       Can an individual register the assignment of a trade mark?

Yes, an individual can register the assignment of a trade mark, and such assignment shall be recorded with the TIPO.

To record an assignment, the following documents are needed:

• a scanned copy of the Power of Attorney of the Assignee signed by an authorised person; and
• a scanned copy of the Deed of Assignment signed by the parties.

7.2       Are there different types of assignment?

A partial assignment is possible for certain goods or services and a trade mark can be assigned with or without goodwill.

7.3       Can an individual register the licensing of a trade mark?

Yes, an individual can register the licensing of a trade mark, and such licence shall be recorded with the TIPO.

A licence agreement is no longer required for filing a licence application if the application is filed by the registrant.  A scanned copy of the licence agreement signed by the parties is acceptable if the licence application is filed by the licensee.

7.4       Are there different types of licence?

A registered trade mark may be licensed by the proprietor, exclusively or non-exclusively, for all or some of the designated goods or services for which it is registered and for a particular locality.

7.5       Can a trade mark licensee sue for infringement?

Only an exclusive licensee is entitled, within the scope of the licence, to bring infringement proceedings in his/her own name unless otherwise prescribed in a licensing contract.

7.6       Are quality control clauses necessary in a licence?

Quality control clauses are not necessary in a licence.

7.7       Can an individual register a security interest under a trade mark?

Yes, an individual can register a security interest under a trade mark, and a creation, change, or extinguishment of a security interest shall be recorded with the TIPO.

7.8       Are there different types of security interest?

No, there are not.

8.1       What are the grounds for revocation of a trade mark?

The principal grounds for revocation are provided below:

• Where the trade mark is altered by the proprietor in different forms from those by which it was registered or supplemented with additional notes, whereby the trade mark is identical or similar to another person’s registered trade mark in relation to goods or services that are identical or similar to those for which another person’s registered trade mark is designated, and hence there exists a likelihood of confusion of relevant consumers.
• Where the trade mark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use.
• Where the trade mark has become the generic mark or term, or common shape for the designated goods or services.

8.2       What is the procedure for revocation of a trade mark?

• The petitioner files a revocation petition.
• The TIPO notifies the petitioner to submit supplementary revocation reasons within a certain time limit (normally 30 days).
• The revocation is finalised if no appeal is filed.

8.3       Who can commence revocation proceedings?

Anyone can commence revocation proceedings.

8.4       What grounds of defence can be raised to a revocation action?

The main grounds of defence may include:

• Non-similarity between two parties’ trade marks.
• No likelihood of confusion in the case.
• The trade mark is not used in a form as registered but should be considered genuine use because its identity remains the same according to the general social concept.

8.5       What is the route of appeal from a decision of revocation?

9.1       What are the grounds for invalidity of a trade mark?

Please see question 5.1.

9.2       What is the procedure for invalidation of a trade mark?

• The petitioner files an invalidation petition.
• The TIPO notifies the petitioner to submit supplementary invalidation reasons within a certain time limit (normally 30 days).
• The invalidation is finalised if no appeal is filed.

9.3       Who can commence invalidation proceedings?

Only an interested party can commence invalidation proceedings.

9.4       What grounds of defence can be raised to an invalidation action?

• The cited mark is not well known in Taiwan in cases where the invalidation action is based on the well-known status of such mark.
• The disputed mark is not filed in bad faith.
• The disputed mark is inherently distinctive or has acquired distinctiveness through use.

9.5       What is the route of appeal from a decision of invalidity?

10.1    How and before what tribunals can a trade mark be enforced against an infringer?

According to the Trademark Act, a trade mark owner may initiate criminal and/or civil action against an infringer in Taiwan.  In the event of trade mark infringement, a trade mark owner may initiate a civil action with the IPCC to seek infringement removal and damages.  Alternatively, the trade mark owner may file a criminal complaint for violation of the Trademark Act with the district prosecutor’s office that has jurisdiction in the place where the suspected infringer has his/her domicile or where he/she commits the violation of the Trademark Act.

10.2    What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

In Taiwan, instead of the pre-trial discovery regime adopted in the US and Europe, the preparatory proceedings should go first before the trial proceedings in a civil or criminal action with respect to a trade mark infringement.  The preparatory proceedings for a civil action usually take around five to eight months, during which period the judge first examines whether the required procedural formalities are met, and the parties submit their respective arguments or move for investigation on evidence.  The judge compiles and lists the disputed issues of the case.  In a criminal action in regard to a trade mark infringement, the judge, during the preparatory proceedings, compiles the substantive issues and evidence presented by the parties, provides opinions with respect to the admissibility of evidence presented by the parties, and decides whether to deny/accept the motion(s) for investigation on evidence.  The preparatory proceedings for a criminal action usually take around three to five months.

10.3    Are (i) preliminary, and (ii) final injunctions available and if so, on what basis in each case?

Yes, preliminary injunctions and final injunctions are available in Taiwan:

• A preliminary injunction is granted if the claimant can show that an injunction is necessary to prevent material harm or imminent danger or other similar circumstances.  The factors generally considered by the court to determine whether a preliminary injunction is warranted include (a) likelihood of success on the merits of the case, (b) whether the claimant would suffer irreparable harm in the absence of an injunction, (c) balance of interests between both parties, and (d) impact on public interest.
• Final injunctions are typically granted if the claimant is successful at trial in establishing that (a) the trade mark is infringed (trade mark similarity and likelihood of confusion), and (b) the defendant is currently engaging in infringing activities or is likely to in the future.

10.4    Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so, how?

Yes, a party in a civil action may move the court to order the opposing party to produce documentary evidence in the opposing party’s possession.  The motion must specify the relationship between such documentary evidence and the disputed fact to be proved, as well as the legal ground for the opposing party’s duty to produce such documents or materials.  Under Article 344 of the Code of Civil Procedure, a party has the duty to disclose: (a) documents to which such party has made reference in the course of the proceedings; (b) documents whose delivery or inspection the other party may require, pursuant to applicable laws; (c) documents that were prepared for the interest of the other party; (d) commercial accounting books; and (e) documents that were made in respect of matters relating to the action.  The party may refuse to produce such (e) documents that involve privacy or business secrets of a party or a third person and the disclosure of such documents may result in material harm to such party or third person.  Notwithstanding, in order to determine whether the party has a justifiable reason to refuse disclosure of such documents, the court, if necessary, may order the party to produce the documents and examine them in private.

10.5    Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

In a criminal action for trade mark infringement, in principle, arguments or written statements made out of court by any person other than the defendant of an action cannot be taken as evidence, unless they are made by such a person being cross-examined in court.  Any person who testifies by providing arguments or written statements before the judge should be ordered to make an affidavit, and any false statements given by such a person will be considered perjury, as defined by the Taiwan Criminal Code.  In a civil action for trade mark infringement, either party may introduce a desired witness(es) or produce evidence in written form and also move for the judge to conduct a necessary examination of the witness(es) or conduct such examination himself/herself after informing the judge.

10.6    Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

No, Article 41 of the Intellectual Property Case Adjudication Act requires that the court may not suspend or stay the proceedings pending resolution of validity by the TIPO or the Administrative Court.

10.7    After what period is a claim for trade mark infringement time-barred?

A damages claim for trade mark infringement is time-barred after a two-year period from the time when the trade mark owner became aware of the infringement and the infringer, or a 10-year period from the time when the infringement took place, whichever expires earlier.

10.8    Are there criminal liabilities for trade mark infringement?

Yes, there are criminal liabilities for trade mark infringement in Taiwan.

10.9    If so, who can pursue a criminal prosecution?

The trade mark owner and/or the exclusive licensee can bring a criminal action against the infringer(s).

10.10  What, if any, are the provisions for unauthorised threats of trade mark infringement?

Any person who commits any of the following acts, in the course of trade and without the consent of the proprietor of a registered or Collective trade mark, shall be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$200,000.00:

• using a trade mark that is identical to the registered or Collective trade mark in relation to goods or services that are identical to those for which it is registered;
• using a trade mark that is identical to the registered or Collective trade mark and used in relation to goods or services similar to those for which the registered or Collective trade mark is designated, and hence there exists a likelihood of confusion of relevant consumers; or
• using a trade mark that is similar to the registered or Collective trade mark and used in relation to goods or services identical or similar to those for which the registered or Collective trade mark is designated, and hence there exists a likelihood of confusion of relevant consumers (Article 95 of the Trademark Act).

Any person who knowingly sells or, due to an intent to sell, possesses, displays, exports, or imports infringing goods shall be liable to imprisonment for a period not exceeding one year and/or a fine not exceeding NT$50,000.00; the same penalties shall also apply to acts performed through electronic media or on the Internet (Article 97 of the Trademark Act).

11.1    What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

A suspected trade mark infringer may assert non-infringement by presenting the following grounds as defences: (1) the allegedly infringing mark is not identical or similar to the allegedly infringed mark and is unlikely to cause confusion; (2) the allegedly infringing mark is not used as a trade mark; (3) the allegedly infringing mark is not used for marketing purposes; or (4) the allegedly infringed mark should be cancelled or revoked.

11.2    What grounds of defence can be raised in addition to non-infringement?

In addition to a non-infringement allegation, the suspected infringer may assert that:

• he/she properly uses the mark in dispute and should be free from the capacity of the allegedly infringed trade mark right in the following circumstances: (i) he/she indicates his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in industrial or commercial matters, but does not use the mark in dispute as a trade mark; (ii) he/she uses the mark in dispute where it is necessary for the goods or services to be functional; (iii) he/she uses, with bona fide intent and prior to the filing date of the registered trade mark, an identical or similar mark on goods or services identical or similar to those for which the registered trade mark is protected, provided that the use is only on the original goods or services and the proprietor of the registered trade mark is entitled to request the party who uses the trade mark to add an appropriate and distinguishing indication; or (iv) goods have been put on the domestic or foreign market under a registered trade mark by the proprietor or with the proprietor’s consent, and the proprietor is not entitled to claim trade mark rights on such goods, unless such claim is to prevent the condition of the goods having been changed or impaired after they have been put on the market, and unless there exist other legitimate reasons (Article 36 of the Trademark Act);
• no damages should be awarded because the suspected infringer lacks the subjective intention or negligence on which an award of damages must be based; or
• the plaintiff’s claim for damages was time-barred (see question 10.7).

12.1    What remedies are available for trade mark infringement?

In criminal aspects, the trade mark owner may file a criminal complaint against an infringer for violation of the Trademark Act and seek a raid action to be initiated by the police and further initiate an incidental civil action during the trial proceedings after the prosecutor’s indictment, which will have more impeding effect and also satisfy the cost-saving purpose.  Seized counterfeit items will be confiscated and destroyed after the judge confirms and sustains the occurrence of a violation of the Trademark Act.  A civil action serves as another remedy, by which a trade mark owner may seek injunction, removal of infringement, compensation, and destruction of the counterfeits.

12.2    Are costs recoverable from the losing party and if so, how are they determined and what proportion of the costs can usually be recovered?

In order to initiate a civil action regarding trade mark infringement, the plaintiff should first pay litigation expenses to the court, and the losing party should bear the litigation expenses upon conclusion of the case.  In other words, the winning party may request the losing party to bear litigation expenses.  Where the parties each win the case in part, the court may, at its discretion, order the parties to bear the litigation expenses in a certain proportion or order both parties to bear litigation expenses that have been incurred by them respectively.

Mandatory attorney representation is required for specific IP-related civil cases.  The court should assess and determine, upon motion or ex officio , the amount of remuneration to the attorney as part of litigation expenses in a case (in accordance with Article 15 of the Intellectual Property Case Adjudication Act and the “Standards for Payment of Remunerations to Attorneys-at-Law as Litigation Expenses or Procedural Expenses”).

13.1    What is the right of appeal from a first instance judgment and is it only on a point of law?

In the criminal aspect of a trade mark infringement action, the complainant may also seek an appeal, by filing a motion with the prosecutor’s office for the prosecutor to take an appeal if he/she finds the judgment unjustifiable.  The second-instance judgment will, however, be the final judgment, with binding effect on the criminal cases of trade mark infringement.  That is to say, neither the prosecutor nor the defendant will be allowed to bring the criminal case to a third-instance trial.

In a civil action, either party may appeal the district court judgment to the High Court should they find the judgment unjustifiable.  The matter may be brought to the Supreme Court – the court of third instance – if the claim value meets the NT$1.65 million threshold.  An appeal taken to the Supreme Court must be based on a point of law.

13.2    In what circumstances can new evidence be added at the appeal stage?

The parties in a trade mark infringement action may present arguments, materials and/or introduce (new) evidence in due course during the preparatory proceedings, or the court may deny those presented by reason of obstruction of proceedings.  Furthermore, as the third-instance court is to examine judicial and only judicial issues, neither party is to present a new argument or introduce evidence of any kind during the third-instance proceedings.

14.1    Is there a mechanism for seizing or preventing the importation of infringing goods or services and if so, how quickly are such measures resolved?

The trade mark owner or its authorised agent may file the request for recording its registered trade mark(s) with the Customs Authority with the material on the key points to identify a counterfeit to the Customs Authority’s database for use in combatting counterfeit goods at the border.  The recordation will be valid until expiration of the trade mark term.

The Customs Authority will withhold the shipment of suspected counterfeits declared for export or import in a random inspection based on the relevant recordation data.  The trade mark owner or its local agent must respond to the Customs Authority within 24 hours whether it is willing to either conduct an authentication based on the photos of the suspected goods provided by the Customs officer through the designated Customs online platform or go to the Customs office for authentication upon receiving the Customs’ notice.

Further, the Customs Authority must duly obtain a signed examination report and valuation report issued by the trade mark owner within three business days to be legally authorised to withhold the shipment of suspected counterfeits from release.  (Upon request, the Customs Authority may allow an extension of three business days when necessary.)  If the trade mark owner fails to do so, the shipment of the suspected goods shall be released unless it violates other customs regulations.

15.1    To what extent are unregistered trade mark rights enforceable in your jurisdiction?

Unregistered trade marks that are commonly known to the public are eligible for right protection under the Fair Trade Act in cases where they are used in the same or a similar manner so as to cause confusion with other goods or services (Article 22 of the Fair Trade Act).  Advertisements published in Taiwan, and figures with respect to sales volume and market share, etc., for the past two to three years, shall be presented if seeking Fair Trade Act protection.

15.2    To what extent does a company name offer protection from use by a third party?

No company may use a company name identical to that of another company.  Where two companies’ names contain any word that may specify their different business categories, such company names will not be considered identical.  A company name can be used exclusively by its owner once it has been approved by and registered at the competent authority.  Anyone may initiate a civil action with the court for protection of his/her company name from use by a third party.  Furthermore, he/she may file a complaint with the Taiwan Fair Trade Commission against the use of his/her company name that is commonly known to the public by a third party in the same or a similar manner without his/her prior consent to seek remedy and protection, by asserting the third party’s violation of the Fair Trade Act.

15.3    Are there any other rights that confer IP protection, for instance book title and film title rights?

Fair Trade Act protection is conferred on unregistered trade marks, personal names, business or corporate names, or containers, packaging, or appearance of another’s goods, or any other symbol that represents such person’s goods, commonly known to the public, so as to cause confusion with such person’s goods (Article 22 of the Fair Trade Act).  In addition, an enterprise may be held in violation of Article 25 of the Fair Trade Act for any deceptive or obviously unfair conduct that is able to affect trading order by taking advantage of any other person’s goodwill, or by the act of plagiarising any other person’s packaging or appearance of goods, book title or film title, etc. that is able to affect trading order.

16.1    Who can own a domain name?

Anyone can own a domain name after completing the due course of registration.

16.2    How is a domain name registered?

A registrant may apply to the registrar, such as the Taiwan Network Information Center (TWNIC), to register the domain name he/she selects and to pay the annuity.

16.3    What protection does a domain name afford per se ?

No one may repeat the registration of any registered domain names.  According to the “Domain Name Dispute Resolution Policy” passed by the TWNIC, in the following three circumstances, a complaint should be sustained and the TWNIC Registry Administrator should cancel or transfer a registered domain name to the complainant after the dispute resolution provider decides in favour of the complainant:

• The domain name in dispute is identical or confusingly similar to the complainant’s trade mark(s).
• The registrant of the domain name in dispute has no rights or legitimate interests in the domain name in dispute.
• The registrant has registered or used the domain name in dispute in bad faith.

16.4    What types of country code top-level domain names (ccTLDs) are available in your jurisdiction?

The TWNIC deals with disputes in relation to ccTLDs ending with “.tw”.

16.5    Are there any dispute resolution procedures for ccTLDs in your jurisdiction and if so, who is responsible for these procedures?

In Taiwan, domain name disputes may be brought to court for resolution by initiating a lawsuit.  In addition to a lawsuit, there is another expedited procedure for dispute resolution in which the dispute is handled by a dispute resolution provider that is an organisation or institution approved and recognised by the TWNIC, such as the Science & Technology Law Institute or Taipei Bar Association, which will select qualified panellists to handle domain name disputes according to the “Domain Name Dispute Resolution Policy”.

17.1    What have been the significant developments in relation to trade marks in the last year?

The Legislative Yuan of Taiwan passed the third reading of the amendment to the Intellectual Property Case Adjudication Act on January 12, 2023, and the amendment came into effect as of August 30, 2023.

The main points of the amendment to 77 articles (including 36 articles added and 41 articles amended) of the Intellectual Property Case Adjudication Act are summarised as follows:

• Exclusive and concentrated trial of IP-related cases: The IPCC should have exclusive jurisdiction over the first-instance civil cases involving IP rights protected by the Patent Act, Trademark Act, Copyright Act, Trade Secrets Act, or Fair Trade Act, etc.  Also, the trial plan system is introduced in the amendment.
• Mandatory representation by attorneys: Mandatory attorney representation is required for specific IP-related civil cases (e.g.: first-instance civil actions that are appealable to the third-instance court for involving the price or value of claims above a certain amount as set out in the Code of Civil Procedure; first-instance civil actions involving patent rights, copyrighted computer programs, or trade secrets; second-instance civil actions; third-instance court cases; and retrial cases).  Attorney’s remuneration should be calculated as part of litigation expenses in specific IP-related civil cases.
• Expansion of expert participation: The amendment introduces the mechanism of expert verification and expert witness.
• Augmented trade secrets protection: The amendment adds measures for enhancing the protection over trade secrets involved in civil actions; for example, use of codes or names for evidentiary documents containing trade secrets for the purpose of de-identification, and expansion of the scope of movants seeking confidentiality preservation orders.
• Enhancement of trial efficiency: According to the amendment, the court may disclose all or part of the report prepared by the technical examination officers when necessary for dispute resolution.
• One-time dispute resolution and avoidance of inconsistent judgments:The amendment establishes the information exchange system between the court and the administrative authority.

17.2    Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.

Case 1: The definition of the well-known trade mark applied to trade mark dilution in administrative case (ruling issued by the Supreme Administrative Court under docket (111) Da-Zi No. 1 on March 17, 2023)

Brief of the administrative case

A UK-based company sought registration for its trade mark with the TIPO (defendant in this administrative action), and the TIPO accepted the trade mark for registration (hereinafter the “trade mark in dispute”), against which the plaintiff filed an opposition on the ground of contravention of subparagraph 11 of paragraph 1 of Article 30 of the Trademark Act before initiating the administrative action, and the opposition turned out to be unsuccessful after the TIPO’s review.  Refusing to back down, the plaintiff (the UK-based company) initiated the administrative action with the IPCC.  The administrative action, however, was dismissed by the IPCC by an administrative judgment, and after that, the plaintiff appealed this administrative case to the Supreme Administrative Court (under docket (110) Shang-Zi No. 138).

The legal opinions adopted by the Supreme Administrative Court on the legal issue involved in this administrative case were discrepant with the opinions made by the Supreme Administrative Court in other precedents; therefore, a request for ruling was submitted accordingly to the Grand Panel of the Supreme Administrative Court (under docket (111) Zheng-Zi No. 2 on October 6, 2022).

Legal issue

Subparagraph 11 of paragraph 1 of Article 30 of the Trademark Act prohibits the registration of trade marks that are identical or similar to another person’s well-known trade mark, and hence there exists a likelihood of confusion of the relevant public (first part) or a likelihood of dilution of the distinctiveness or reputation of said well-known trade mark (latter part).  Should the ground of dilution set forth in the latter part of this provision be raised for trade mark refusal when and only when the “well-known trade mark” defined thereby has enjoyed recognition to the extent that it has become commonly known not only to relevant consumers but also to the general public at large?

Reasonings provided in the Grand Panel’s ruling

Article 31 of the Enforcement Rules of the Trademark Act has clearly defined “well-known trade marks” as those capable of being commonly recognised by relevant enterprises or consumers as substantiated by objective proof.  In addition, neither the dilution clauses incorporated in the Trademark Act in 2003 nor the Enforcement Rules thereof require that the dilution ground of trade mark refusal defined in the latter part of subparagraph 11 should attain the level of fame commonly recognised by the general public.  Therefore, the interpretation of the term “well-known trade mark” applicable to the latter part of this provision (likelihood of dilution) should be consistent with the interpretation applicable to the first part (likelihood of confusion).  That is to say, it refers to a trade mark widely and commonly known to relevant enterprises or consumers as proved by objective evidence without attaining the level of fame among general public awareness.

Case 2: The reliability and admissibility of an authenticity examination report (a criminal judgment rendered by the Supreme Court under docket (111) Tai-Shang-Zi No. 5677 on February 9, 2023)

The appellant, Huang, as the actual responsible person of Company A, argued that the earphones and USB cable in dispute he sold carried the complainant’s registered trade mark, and the products in dispute were examined by the expert, Wei, who was entrusted by the complainant, and confirmed not to be the products manufactured by the complainant’s authorised factory.  Huang was found not guilty in the first-instance judgment, which was then reversed by the appellate court in the second-instance judgment; the appellate court found the authenticity examination report made and produced by Wei admissible, and therefore decided that Huang was guilty, against which Huang filed an appeal against the second-instance judgment and brought this case to the Supreme Court.

According to the Supreme Court judgment, the appellate court did not err in finding in the second-instance judgment that the authenticity examination report produced by Wei was admissible and in convicting Huang.  Hence, the Supreme Court dismissed Huang’s appeal with a finalised judgment.  The Supreme Court judgment’s reasoning is summarised as follows:

• The expert witness, Wei, was appointed by the court as agreed upon by and among the prosecutor, the defendant, and the defendant’s attorney (hereinafter the “Parties”), and was further ordered by the judge to sign a written oath to guarantee the authenticity of its examination.
• With respect to the method of authenticity examination, it was agreed upon by the Parties that the complainant should provide the equipment and dispatch personnel for photographing the seized products under the on-site supervision by the court clerk and court attendant assigned by the judge, so as to confirm that the objects to be examined were indeed the seized products.
• The expert witness had to produce an authenticity examination report and written proof of his/her professional competence to conduct the authenticity examination.  Moreover, the expert witness appeared at a hearing to explain the standards of examination and determination and to elaborate on the reasons why the seized products were examined as counterfeit.  The expert witness was also questioned by the appellant on any issues the appellant found unclear and questionable.
• The Supreme Court determined that the appellant’s right of defence in litigation was not divested because the expert witness, Wei, who met the required qualifications and has professional competence, had made considerably clear explanations about whether the seized products were authentic or counterfeit based on his knowledge and experience and with appropriate methods and tools, and had further been questioned by the appellant.  Therefore, the appellate court did not contravene the laws by making a decision on this case based on the authenticity examination report.

Case 3: Does a trade mark proprietor’s failure to exercise his/her/its rights or failure to file a lawsuit after his/her/its knowledge of the existence of infringement contravene the principle of good faith and further constitute a ground for forfeiture of rights?  (A civil judgment under docket (111) Min-Shang-Geng-Yi-Zi No. 5 rendered by the IPCC on August 17, 2023)

The appellant, Eslite Corporation (hereinafter “Eslite”), alleged that it has successfully registered its Chinese-character mark “誠品” (hereinafter the “Mark”) since 1989 and designated the Mark for use on various goods and services, and that it has expanded the scope of its business to engage also in the business of logistics and transport since 1996.  Moreover, the Mark has been recognised as a well-known trade mark that has been widely known among consumers since 1993.

The appellees used their respective company names including the Mark and also used the Mark for marketing purposes on their webpages, fan pages, and advertisements.  Eslite asserted that the aforesaid conduct of the appellees was likely to cause confusion to relevant consumers and to dilute the distinctiveness and reputation of the Mark, and hence infringed upon Eslite’s trade mark rights.

The lawsuit has been dragging on for years.  The first-instance judgment was rendered in favour of the appellees but was reversed in the second-instance proceedings, and hence the appellees appealed this case to the Supreme Court, which finally vacated the second-instance judgment and remanded this case back to the second-instance court for retrial.  The IPCC handed down a judgment in favour of Eslite, demanding that the appellees do not use the Mark and be severally and jointly liable for damages to Eslite.

• The appellees had been using the Mark in enlarged and striking font on their trucks, boxes, and company websites, which is very likely to cause consumers to mistakenly believe that the products or services provided by Eslite or the appellees are of the same source or that the users of the Mark are affiliates or in licensor-licensee or franchisor-franchisee or any other similar relationships.  As such, the appellees violated subparagraphs 2 and 3 of Article 68 of the Trademark Act.
• With the clear knowledge that the Mark is a well-known trade mark, the appellees used the Mark as part of their company names, and such use was likely to cause confusion to relevant consumers or to dilute Eslite’s business reputation and distinctiveness.  By so doing, the appellees violated subparagraphs 1 and 2 of Article 70 of the Trademark Act.
• The appellees defended themselves by arguing that there had been no occurrence of confusion between their companies and Eslite’s company throughout their business operation for almost 20 years, and based on that, the appellees invoked laches, that is, Eslite’s lengthy failure to assert its rights.  However, from the judge’s perspective, the appellees had not produced any evidence of any kind to prove Eslite’s inaction or any contradictory action seeking no infringement removal and damages payment by the appellees.  Moreover, the judge held that the appellees had also failed to substantiate that Eslite agreed to, either expressly or implicitly, the appellees’ use of the Mark as part of their company name.  In view of the foregoing, the judge determined that the appellees’ defensive arguments with respect to Eslite’s laches and contravention of the principle of good faith were inadmissible.

17.3    Are there any significant developments expected in the next year?

The Legislative Yuan of Taiwan greenlighted the amendment to partial provisions of the Trademark Act, with the amendment promulgated by presidential order on May 9, 2023.  The amendment will take effect on a date determined and announced by the Executive Yuan.

Highlights of the amendment are summarised as follows:

• Introduction of accelerated examination: Trade mark applicants who require timely registration may request with the trade mark registrar for accelerated examination by stating the facts and reasons for their immediate need for registration and pay double official fees.
• Establishment of a trade mark agent management system: To act as trade mark agents and engage in trade mark agency services, individuals must possess trade mark-related professional competence and complete trade mark agent registration.
• Simplification of the authentication procedure by trade mark owners after receiving a notice from customs: To keep in line with the simplified border control measures implemented by the Customs Administration of the Ministry of Finance, trade mark owners may conduct authentication on suspected goods or articles detained by customs though an online platform by accessing the digital photos of these suspected goods or articles and may conduct on-site authentication when necessary.
• Expanded scope of eligible trade mark applicants: To answer to business entities’ practical needs for operation on the market, the amendment provides that partnership organisations (such as law and architectural firms), non-corporate groups (such as temples, associations, and production and marketing groups), and duly registered sole proprietorships or partnerships are now included as eligible applicants for trade mark registration and may act as a party in litigation.
• Specification of fair use:The amendment incorporates and defines “nominative fair use” that is not subject to the effect of another person’s trade mark rights and does not constitute trade mark infringement.  For example, mobile phone repairing service providers may use the trade marks of various branded mobile phones in their advertisements to indicate the specific branded mobile phones for which they provide repairing services.

17.4    Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

General practice for trade mark infringement

In general circumstances of trade mark infringement occurrences, trade mark owners may act upon the Trademark Act to assert trade mark rights for civil or criminal aspects involved.  The trade mark owner in practice files a criminal complaint seeking a raid action to be initiated by the police and further initiates an incidental civil action during the trial proceedings after the prosecutor’s indictment, which will have a greater impeding effect and also satisfy the cost-saving purpose.  Under the Intellectual Property Case Adjudication Act, the judge shall hear and decide on the criminal action and the incidental civil action at the same time.

Use of another’s registered trade mark online

For such promotional activities as displaying online a product bearing another’s registered trade mark or otherwise advertising or issuing catalogues indicating said trade mark carried on the product, such use of the registered trade mark in the foregoing activities will be considered “nominative fair use” as defined by subparagraph 1 of paragraph 1 of Article 36 of the Trademark Act when and only when such use aims to provide correct and truthful product information to consumers and is necessary and in line with good faith commercial practices without any likelihood of causing confusion to consumers with respect to the source of goods or services.  That is to say, in the foregoing activities, it is legally acceptable to assert that such activities are not subject to the effect of another’s registered trade mark.  However, if the manner or type of use of the trade mark in the foregoing activities is likely to cause consumers confusion, such use will still be considered likely to cause trade mark infringement.  Therefore, “nominative fair use” should be assessed and determined on a case-by-case basis.

Trade mark registration for responding to the rise of the Metaverse

As branded products have been launched on the Metaverse, it has become necessary to complete trade mark registration for designated use on Metaverse-related goods or services (as elucidated in the following paragraphs) if goods/service providers intend to engage in business activities on the Metaverse, so as to extend trade mark protection of their trade marks to the Metaverse.

The “Comprehensive Guide to Domestic and Foreign Trademark Applications” compiled by the TIPO in October 2022, which provides the applicable classifications for virtual goods or services in the Metaverse, establishes classes 9, 35, 41, and 42 as the main Nice Classification classes for virtual goods or services:

• Class 9 is the classification for downloadable virtual product images or software that can be used online and in the online virtual world, namely virtual product images featuring the category name of the physical product; for example, clothing, etc.
• Class 35 is the classification for the online retail service of virtual goods, that is, the online retail service for the category name of physical goods that are used in a virtual environment/world.
• Class 41 is the classification for entertainment services, that is, online game services or virtual reality game halls that use the virtual images of the category name of physical goods.
• Class 42 is the classification for non-downloadable virtual product image files or software that can be used in the online virtual world and feature the category name of the physical product.

Production Editor's Note

This chapter has been written by a member of ICLG's international panel of experts, who has been exclusively appointed for this task as a leading professional in their field by Global Legal Group , ICLG's publisher. ICLG's in-house editorial team carefully reviews and edits each chapter, updated annually, and audits each one for originality, relevance and style, including anti-plagiarism and AI-detection tools. This chapter was copy-edited by Megan Hylton , our in-house editor.

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Understanding the Taiwan trademark application process and its peculiarities

08 October 2020

Foreign entities in Taiwan are required to appoint a representative for many legal procedures. For trademark applications, it is common to appoint a trademark agent. Although this can be anyone, for safer and broader coverage it is recommended to use a specialised law firm that will spearhead a company’s entry to the Asia market.

The following application documents are required for foreign entities:

• a trademark registration application form (name, nationality and address of the applicant);
• a power of attorney (simple signature – no notarisation required);
• a reproduction of the trademark (drawings of 5cm to 8cm by 5cm to 8cm);
• a list of designated goods or services (description and Nice Classification); and
• special certificates and other necessary documents (eg, priority documents and origin certificates) translated into Chinese.

A document showing proof of use is not required for a Taiwanese trademark application or renewal. Although documentation is not required, it is useful to remember that a trademark that is not used for three consecutive years may be subject to a non-use cancellation by an interested third party or ex officio .

Registration timeline

The time from trademark application date to publication of the registration can be from eight to 12 months. However, if there are office actions, oppositions or postponements due to other legitimate reasons, it may surpass the 12-month threshold. In reality, the Taiwan Intellectual Property Office (TIPO) trademark review time varies with each case and the workload of the specific Nice class examiner. Now, TIPO has launched a fast-track mechanism which, through its  e-filing system, will speed up examination time and is two months faster than the regular track.

Trademark examination

The first step is the formal examination to verify whether the application documents and materials are in order (ie, if the application content is sufficient and clear and the submission of documentary evidence or related procedures is complete). If there is a need to modify or supplement the application, the TIPO will issue a revision notice with two months to respond.

Next, a substantial examination for the statutory registration requirements takes place, comprising absolute grounds (ie, not fraudulent or illegal) and relative grounds (ie, constituent elements and existence of prior conflicts). Here, the TIPO’s trademark database is used to search for identical or similar trademarks that are already registered, approved or previously applied for in similar categories of goods and services. The application will be rejected if the examiner finds a similar designation according to the TIPO’s distinctiveness guidelines. Hence, to prevent negative results and save time, it is advisable to conduct a prior trademark search and consult trademark professionals.

If no issues are found, an approval certificate will be given to the applicant, who has to pay the licence fee within two months. After payment, the trademark registration is published and a three-month announcement period for opposition starts. If no oppositions are filed in this time, then a trademark registration remains valid.

Trademark oppositions cannot be filed at the application stage as Taiwan has a post-registration opposition system. Anyone can oppose an application through a written pleading and defence procedure. The facts and grounds of an opposition may be the same as the aforementioned absolute and relative grounds in the TIPO’s substantial examination. However, lack of distinctiveness, which may cause confusion and misunderstanding among consumers, is generally the main reason for an opposition.

Administrative appeals

TIPO decisions on the substantial examination or the opposition, invalidation or revocation of a trademark registration can be administratively appealed within 30 days before the Ministry of Economic Affairs. The ministry’s decision can then be appealed to the IP Court, followed by the Supreme Administrative Court, as Figure 1 demonstrates.

Figure 1. Workflow of the Taiwan trademark application process

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Trademark in Taiwan

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• Trademark fees

Fees associated with filing trademark applications in Taiwan as well as other trademark fees are available in the fee calculator .

• Multiple-class applications

Multiple-class trademark applications are possible in Taiwan.

• Filing requirements in Taiwan

For obtainment of the filing date a trademark application in Taiwan should contain: - representation of a trademark; - list of goods and services; - applicant's details. A simply signed copy of Power of Attorney should be submitted within 3 months from the filing date of the Taiwanese trademark application. Notarization or legalization is not required. A certified copy of the Priority Document should be provided within 3 months from the filing date. The translation of the front page into Chinese is required. Electronic copy is also acceptable.

• Examination, publication and opposition to a trademark application in Taiwan

The application process includes a formal examination, an examination of distinctiveness (absolute grounds) and a search for prior trademarks. In case of positive results of examination, the trademark will be registered and published in the Trademark Gazette. Thereupon any interested person may file an opposition against a trademark application in Taiwan within 3 months from the publication date.

• Grant, validity term and trademark renewal

The grant fee should be paid by the applicant within two months from receipt of the Notice of Allowance. A trademark registration in Taiwan is valid for 10 years from the date of registration. The registration is renewable for ten-year periods. Trademarks may be renewed 6 months prior to the expiration date or 6 months after it providing that a surcharge for late renewal has been paid.

• Duration of registration procedure

The processing time from filing to registration is approximately 12 months.

• Use requirement

A trademark may be subject to cancellation in Taiwan if it has not been used within the continuous period of 3 years from registration.

• Representation by a trademark attorney

For foreigners, it is recommended to perform the trademark prosecution in Taiwan through a registered Taiwanese trademark attorney.

Online Search Database for Taiwanese Trademarks .

Brief summary is based on the information provided by TJIP International Patent Trademark Firm on 17.02.2023 Please contact us if the above information is not in conformity with Taiwanese IP Laws.

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What are the advantages of filing both an invention application and a utility model patent application in Taiwan?

The amendments to the Taiwanese Patent Act, made effective on June 11, 2013, introduce a seamless transition from the utility model (UM) patent to the invention patent.

Specifically, the applicants could file a UM patent application and an invention patent application, both of which pertain to the identical invention, on the same date. Since the UM patent application may be granted as a UM patent (without a substantive examination) within six months from the filing date, filing the UM patent application could help the applicants secure their rights in a relatively quick fashion despite trying to push the invention patent application through the extensive examination process, which generally takes at least 2.5 years from the filing date.

To deal with the double-patenting rejection in view of the UM patent after successfully overcoming all other merit-based (e.g., novelty/inventive step) and eligibility-based rejections over the invention patent application, the applicants could file a disclaimer. Such disclaimer functions to abandon the UM patent rights on the date the invention patent is issued. In doing so, the applicants can ensure their rights, arising out of the UM patent, will continue without interruption in the form of the invention patent.

Please be noted that a utility model is directed to the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature. In other words, composition and process are not eligible subject matters for utility models.

Reference: Articles 32 and 104 of Patent Law

What if an invention was made in both USA and China? Note: Both the USA and China require a foreign filing license (FFL).

Real cases: An invention was made by two co-inventors. One lives in China and no record shows the Chinese co-inventor traveled to the USA. The other lives in the USA and no record shows the US co-inventor traveled to China. The foreign filing licenses are required in both China and the USA.

According to 37 CFR 5.11(b), the license from the Commissioner for Patents referred to 37 CFR 5.11(a) would also authorize the export of technical data abroad for purposes relating to the preparing, filing or possible filing and prosecution of a foreign patent application. Accordingly, preparation of a request in China for a China’s FFL prior to receipt of a US FFL might violate 37 CFR 5.11(b).

Article 20 of Chinese Patent Law prohibits applicants from filing foreign applications prior to receipt of a China’s FFL from China IPO (SIPO), but not from preparing patent applications or requests for a FFL from aboard.

Therefore, it would be better to prepare documents in the USA for the US FFL. Once the US FFL is received, the applicant can translate and file a patent application with the SIPO. Then, file a US patent application claiming the priority of the Chinese application.

Other than the above-mentioned procedure, taking the route of the PCT could be another option to think about. Specifically, you could secure the U.S. FFL (which could be done in a matter of days) and then file the English-version PCT application with the PCT Receiving Office in China, which effectively eliminates the need to secure the China’s FFL.

Thereafter, you could turn the PCT filing in China into the U.S. national phase application (or wait for the search report for the PCT filing and make the preliminary amendment if necessary). In doing so, you might be able to satisfy the requirements of the FFL without waiting too long before pursuing protection in both countries.

Prior to promulgation of the amendment to the current Taiwan Patent Act, it is required to submit an assignment at the time or within a specified period after the application is filed. According to Article 25 of the amendments, the requirement of the assignment is cancelled. Is this correct?

In fact, the deletion of paragraph 2 of Article 25 of the previous Taiwan Patent Law does not mean the abolishment of the practice of submitting inventors’ assignment documents. It is only a simplification of the procedure to submit assignment. The TIPO presumes that the applicant listed on an application has the right to file the application.

However, the TIPO might request the applicant to submit an assignment under certain situations. Specifically, if the invention was made by an employee in the performance of his/her duty and the applicant is the employer (Article 7), there is no need to submit an assignment. Second, if the invention was made by co-inventors and the applicants are identical to the co-inventors, there is no need to submit an assignment. In other situations where the applicants are not identical to the co-inventors, the TIPO might request for an assignment to show the applicants have the right to file the application. Third, if the applicant of the Taiwanese application claiming the benefit of priority is different from the applicant of the priority (parent) application, it is required to file evidence to show the applicant of the Taiwanese application has the right to file the Taiwanese application or to claim the benefit of the priority application. The evidence might be an assignment of invention or an assignment of foreign priority. 

1.Grace Period for claiming priority – Article 29

  (1)Old Law

     Applicant must claim the benefit at the time of filing and

     submit the priority documents within   4 months   from the filing date.

 (2)New Law

    a)File within 12 months from the earliest priority date and

       claim the benefit at the time of filing.

    b) If unintentionally failing to claim the priority at the time of filing,

       the applicant should apply for reinstatement of priority,

       pay the required  fee and undertake required actions   within 12   months

       from the earliest priority date.

     c)Submit priority documents within   16 months   from the earliest priority date.

2.Reinstatement for Failure to Pay Issue Fee – Article 52

        3 months to pay Issue Fee, no grace period

  (2) New Law

     a)Unintentional failure

     b)Pay the issue fee and   two times   the patent annuities of the first year

        within   six months   after the time limit expired

        (3 months from the date of Notice of Allowance) 

3.Reinstatement for Failure to Pay Annuity – Articles 70, 94

     a)Double annuity within 6 months after expiry

  (2)New Law

     b)Within   6 months , 20% more per month and   up to double annuity  

       (100, 120, 140, 160, 180, 200, 200)

     c)From   7 months to 18 months ,   Triple annuity   (100, … 300)

If 18 months from expiry lapses, no reinstatement is possible.

Changes for Design Patents

1. Subject Matters for Design Patents Increase

     Entire design only

     a)Partial designs

     b)Computer-generated icons and graphical user interfaces (icons & GUIs)

     c)A set of design where two or more articles belong to the same category and

       such articles are in custom sold or used as a set

     d)Associate design was abolished.

     e)Derivative design system was adopted.

Second, the calculation of renewal for the derivative design patent should be independently calculated from the issue date of the derivative design patent.

Does a lapse of the original design patent not affect the rights on the derivative design patent?

The original (parent) design patent might be extinguished under different situations, for example, lapse of deadline for paying annuity or lapse of 12 years from the filing date of the parent patent (patent term). If a parent design patent lapses the time limit for paying annuity, lapse of the parent design patent does not affect the rights on its derivative design patent. If a parent design patent lapses 12 years from the filing date of the parent patent, its derivative design patent also lapses its patent term because the patent term of the derivative design patent shall not extend beyond that of the parent design patent.

How to calculate annuities and patent terms of a derivative design patent?

Renewals for derivative designs are due on the anniversary date of its issue date. The grace periods for paying the issue fee and annuities are the same as that for invention; if the annuity is not paid before the due date, it still can be paid later with a fine. 

The definitions of Partial, GUI’s and Icon designs are very close to that defined by the US Patent Law and Rules. Partial, GUI’s and Icon designs are deemed as normal designs. That means the partial, GUI’s and Icon designs have their own patent numbers and expiration dates. They do not depend upon any parent design. The calculation of partial, GUI’s and Icon designs is the same as normal designs.

According to Articles 129 of Patent Law, one design application for a set of articles can be filed to cover "the design." The scope of the design patent pertaining to the set of articles covers the ornamental design of the set of the articles, but does not individually cover the ornamental design for each of the articles. If the applicant would like to have a patent right covering the design of the whole set of the articles as well as individual design of the articles, it is necessary to file an application for the set of the articles as well as applications for each design of the articles, respectively. The design patent for a set of articles has its own patent number. The design patents for each of the articles in a set of articles have their own patent numbers as well and their annuities should be paid individually. If an applicant files an application for a set of articles, Taiwan IPO will only grant one design patent covering the ornamental design of the set of articles, not multiple design patents covering each ornamental design of the article in the set of the articles.

Deadline to claim priority and file a priority document for a design patent application and a derivative design application

Deadline to pay the grant fee for a derivative design application

It is not allowed to add new matter after filing of an application. According to US patent system, the applicant may consider filing a CIP (continuation-in-part) application claiming the benefit of the earlier patent application (35 U.S.C. 120). According to Taiwan Patent Law, there is no application the same as US CIP applications. However, an applicant may file a subsequent patent application claiming the domestic priority of his/ her earlier patent application within 12 months from the filing date of the earlier patent application in accordance with Article 30 of Patent Law as attached below. Practically, we usually file the subsequent application with new matter (new embodiments).

Next, it should be noted that the earlier application shall be deemed having been withdrawn upon expiry of 15 months from the filing date of the earlier application. Therefore, it is important that the subsequent application should claim inventions in both the earlier application and the subsequent application (new matter). Otherwise, the claimed invention of the earlier application will be deemed having been withdrawn if the subsequent application claims only new matter.

Article 30 Priority claim based on earlier application

Where an applicant, based on his/her earlier invention or utility model patent application in the ROC, files a subsequent patent application, he/she may make a priority claim with respect to the invention or utility model disclosed in the description, claim(s) or drawing(s) submitted for the earlier patent application. This provision shall not apply under any of the following circumstances: 

1. where a period of twelve months has elapsed from the filing date of the earlier patent application;

2. where priority has been claimed in accordance with the provisions of Article 28 or this Article in respect of the invention or utility model disclosed in the earlier patent application;

3. where the earlier patent application is a divisional patent application to Paragraph 1 of Article 34 or Paragraph 1 of Article 107, or a patent application converted pursuant to Paragraph 1 of Article 108;

4. where the earlier patent application is for an invention patent application that has been published or has been irrevocably rejected;

5. where the earlier patent application is for a utility model patent application that has been published or has been irrevocably rejected; 

6. where the earlier patent application has been withdrawn or dismissed.

The earlier patent application referred to in the preceding paragraph shall be deemed having been withdrawn upon an expiry of fifteen months from its filing date. 

Priority claimed shall not be withdrawn upon an expiry of fifteen months from the filing date of the earlier patent application. 

For a subsequent patent application filed with priority claim in accordance with Paragraph 1 of this Article, which has been withdrawn within fifteen months from the filing date of the earlier application, the priority claim thus made shall be deemed having been withdrawn at the same time.

Where an applicant claims two or more priorities for a patent application, the calculation of priority period shall be on the basis of the earliest priority date.

For a patent application filed with priority, examination on its patentability shall be based on the priority date.

Where a priority claim is made in accordance with Paragraph 1 under this Article, the filing date and the application number of the earlier patent application shall be declared at the time of filing. If the above-mentioned declaration is not made, priority claim shall be deemed not having been made.

│     │     │     │     │     │     │     │   --> Add:4F., No.410, Sec. 5, Chunghsiao E. Rd., Taipei 110, Taiwan, R.O.C.　 Tel:886-2-2723-8589　Fax:886-2-2723-8565　Email: Copyright © TaiwanAdvancePatent&Trademark Office. Infographics Choose a country Filing Requirements Industrial Designs Domain Names Trademarks - Filing Requirements Power of attorney simply signed. Certified copy of the priority document if claimed. Late filing of documents: allowed within 3 months from filing date without penalty. Photocopy of the trademark registration certificate. No documents are required. Power of attorney signed by the assignee. Deed of assignment document signed by the assignor and assignee. Late filing of documents: not allowed. Merger agreement document signed by both parties. Power of attorney reflecting the new name or address simply signed. Certified copy of the certificate of incorporation or an extract from the commercial register reflecting the change. Power of attorney signed by the licensee. License agreement document signed by both parties. General Information Wisdom News & Insights Firm Updates & Events Invention, Utility Model & Design Patents Publications Awards & Events Taiwan Trademarks 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. (Trademark Holder: Ministry of Economic Affairs, R. O. C.) (Trademark Holder: Council of Agriculture, Executive Yuan ROC) (Trademark Holder: ROC Disability Cycling Association) (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? After filing the initial application, the Taiwan IP Office will conduct “Formality Examination” to check if the application can satisfy the formality requirements. 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. 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. 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. 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 Trademark Information Taiwan Trademark by Patent and Trademark Office 2021-05-27 2021-08-21 Amazon Brand Registry Trademark Requirements Argentina Trademark Australia Trademark Canada Trademark China Trademark EU Trademark (EUTM) Hong Kong Trademark India Trademark International Trademark Application (Madrid) Mexico Trademark New Zealand Trademark Trademark Transfer and Trademark Assignment UK Trademark US Trademark US Trademark Application - Applicant Information US Trademark Application Process Design Patent / Industrial Design Utility Patent / Invention Patent What is a trademark? What does it protect? A trademark is a recognizable sign, design, or expression that identifies the commercial source or origin of products or services from those of others. The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark is established through actual use in the marketplace, or through registration office of a particular jurisdiction. The owner of a trademark may pursue legal action against trademark infringement. All in all, trademark law seeks to protect exclusive rights and commercial source that is related to certain products or services, assuming there are no other trademark objections. What are the benefits of registering a trademark? Although registering a trademark is not mandatory, there are several advantages that can enhance your right of using a trademark. In Taiwan, the trademark system is established to protect the legal rights for registering a trademark. Once a trademark is registered in accordance with the law, it gives you a legal presumption of the exclusive right to use your mark nationwide on or in connection with the goods and services identified in your registration. A registered trademark can also be used by others under a licensing agreement. Trademark registration creates a legal presumption that you are the owner of the mark. This is a real advantage if you need to enforce your registration either in or out of court. If someone violates of the exclusive rights attached to a trademark without your authorization as the trademark owner or as licensees, you will be able to enforce your rights through trademark infringement proceedings. You may request monetary compensation from the party who intentionally or negligently infringes the registered trademark. How much does it cost? Basically, the Taiwan trademark application fees include the initial application fee, registration fee, and renewal of registration fee. Taiwan Trademark Initial Application Fee NTD$3000 per class of goods or services All trademark fees are calculated on a “per class basis” for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. In other words, you must pay for each class of goods and/or services in the application. Additionally, if the number of items under one class are more than 20, you have to pay NTD$200 for each additional one. Taiwan Trademark Registration Fee NTD$2500 per class of goods or services NTD$2500 per class of goods or services Once the trademark has been approved, the applicant shall pay for the registration fee within two months in order to issue a trademark registration certificate. A Taiwan trademark registration remains in force for a 10 year period from the date of registration. Taiwan Trademark Renewal of Registration Fee NTD$4000 per class of goods or services NTD$4000 per class of goods or services A Taiwan trademark renewal must be filed every 10 years calculated from the date of registration. The complete trademark fee chart is available at the official website of the Taiwan Intellectual Property Office (TIPO). What types of material can be trademarked? A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks which do not fall into these standard categories, such as those based on color, scent, taste, touch, motion, position, gesture, and multi-media. If a trademark is used in relation to services rather than products, it can also be trademarked as a service mark. What is the general application process? First of all, you have to select a mark, identify your mark format, and choose the specific goods and/or services to which the mark will apply. Then search the database to determine whether anyone is already claiming trademark rights in wording, logo, or design that is similar and used on related goods and/or services. Before filing an application, you also need to identify what your “basis” for filing is. As the above are very critical at the beginning of the process, you may consider whether to hire a trademark attorney or a trademark agent to help you with these steps, as well as the overall application process. Secondly, you will have to file the application through TIPO. After the application is submitted, you should monitor the progress of your application through the Trademark Search at the TIPO website . Once the minimum filing application requirements are met, it will take a few months for TIPO to review and issue a letter (known as an Office Action) explaining any substantive reasons for refusal or corrections. If TIPO raises no objections to registration, they will approve the mark for publication in the “Trademark Gazette”. Any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. After going through the above approval process, TIPO will register the mark and send the owner a certificate of registration. The owner shall pay for the registration fee within two months and the trademark remains in force for a 10 year period from the date of registration. Last but not the least, after the mark registers, the trademark owner must file specific maintenance documents to keep the registration live, including filing a renewal of registration every 10 years from the date of registration. How long does it take to apply for a trademark? The examination of trademark registration applications is complicated and time-consuming, as it requires conducting a trademark search and examining whether there is any legal requirement for objection. As a result, it can take 6 to 7 months from the time the application is submitted before the applicant will receive official certificate of registration, not including the time for correction, defense, or suspension due to any other matters. How long does the trademark last? After the trademark has been approved, the applicant must pay for the registration fee the trademark within two months once they receive the letter of approval. TIPO then publishes the trademark in the “Trademark Gazette”. Officially, the trademark owner will obtain the trademark rights for 10 years from the date of the registration announcement. What information does the client have to provide? In order to apply for a Taiwan trademark application, the applicant must provide the information below. Section I: Trademark Representation Attach a copy of the trademark representation to the application form. The mark should be clearly visible and of high resolution. Trademark Name Trademark Color (typically black, but can also be in color) Disclaimers Attributes of the trademark, including language (English, Japanese, etc.), Chinese translation, logo or design mark description (describe the pattern in words), etc. Section II: Claim Priority An applicant needs to state the first date of use anywhere in the world for each trademarked good or service if applicable. Section III: Exhibition Priority An applicant needs to state the exhibition name and the date of the first exhibition if applicable. Section IV: Applicants (if there are multiple applicants, each applicant should provide the information below) Applicant Name, including Chinese and English name if applicable Applicant Entity Type (such as individual, legal entity, company, organization, etc.) Applicant Nationality (Taiwanor foreign country) Identification Card Number or Tax ID Number Applicant Contact Information including address, phone number, fax, and email. The address should include both Chinese and English. The address must include a postal code. Section V: Actual Use Basis The classification of goods and services. To find the list of classified goods and services, please search the TIPO master list of Classification for Goods and Services. The category names of goods and services What size should the logo be? The image for each trademark should be square with a length and width between 5cm to 8cm. The image resolution should be at least 300 dpi, and the image file format must be in JPG or TIF. What forms should be filled out? When applying for the trademark registration, you will need to fill out the Registration Application Form. If you decided to hire a trademark attorney or trademark agent to represent you in the registration process, you also need to fill out the power of attorney. There are also forms for various purposes such as Change of Trademark Right, Dividing, Renewal of Registration, Dispute Issue applications, etc. How does the client search for existing trademarks? Before you apply, you can search the TIPO trademark database (Trademark Search System) to see if any trademark has already been registered or applied for that is similar to your trademark and used on related products or services. A trademark that meets that criteria may prevent your trademark from being registered because it creates a likelihood of confusion between your mark the the previously registered trademark. To get started on your patent or trademark application, email us at [email protected]. To consult a USPTO registered patent and trademark attorney , please visit Minderlaw.com.   The video below discusses US trademark registration, but the general concepts also apply to Taiwan trademark registration.   Information posted or made available on or through this website is subject to the Terms, Conditions, and Disclaimers . The information is intended for general informational purposes only. No user of the website should act or refrain from acting on the basis of the information without seeking legal advice of counsel in the relevant jurisdiction. For the trademark filing volume in 5 consecutive years, Accolade IP ranked the 1st in Hong Kong, 2nd in Singapore, top 3 in Macao, and we secured the top 20 in Taiwan monthly filing. ACCOLADE IP is your confident choice for trademark registration! ACCOLADE is a leading intellectual property registration service agency in Taiwan, providing global trademarks, designs, patent registrations. Your IP reliable and trustworthy consultant. We Value Highly on Integrity and Price Transparency The following charges include all of the costs required (in HKD) , which include all of the official fee, attorney fee, documentation fees and regular incidentals. -The following charges exclude the charges for responding to the objection or cancellation by third parties or official, patent assignment or renewal, etc.  -To conduct a patent search before the application for registration in order to evaluate the feasibility of registration. (optional) -It is an estimated cost only and the charge is subject to actual cost which may vary due to unforeseen circumstances like fluctuation of currency and increase or decrease of tariffs, procedures and works. China Trademark Registration Program INTEGRATED REGISTRATION VS SEPARATION REGISTRATION  From NTD$8,000 TRADEMARK & COPYRIGHT REGISTRATION NTD$19,200 TRADEMARK REGISTRATION AND RETRIAL NTD$23,200 TRADEMARK REGISTRATION AND THREE YEAR NON USE CANCELLATION NTD$27,200 Trademark Registration Trademark Search Trademark Watch Key services highlight, trademark registration. Trademark Application + Registration Fee United States of America Ntd $26,000, european union, ntd $46,000, ntd $10,000, ntd $16,000, ntd $22,000, design registration, ntd $33,600, ntd $18,000, ntd $35,200, ntd $74,400, patent registration, ntd $40,000, ntd $300,000, ntd $152,000, patent application. Upload Patent Draft Design Application Upload Design Trademark Application Upload Trademark 卓遠佔據香港知識產權電子提交量的首5名 卓遠佔據香港知識產權電子提交量的頭10名, 台灣及新加坡代表辦事處開業, 卓遠實現知識產權註冊事業全球化, 卓遠的深圳代表辦事處開業. About Tun Hwa Areas of Practice English 繁體中文 English Tun Hwa International Intellectual Property Office is founded in 1991. We provide professional services for handling intellectual property related matters around the world, particularly for patent and trademark prosecutions in Taiwan and China. We have established long term cooperative business relationships with professional IP and law firms all over the world and built up a global network for IP services. Tun Hwa has been recognized as one of the most reliable intellectual property firms in Taiwan. Tun Hwa has been assisting entrepreneurs, companies, and government bodies to obtain and protect their IP rights in more that 70 countries, including Taiwan, China, Hong Kong, Japan, Republic of Korea, Thailand, Singapore, India, Russia, Canada, U.S.A., Europe, Finland, England, Germany, France, Australia, New Zealand and so on. domestic and foreign patent search, drafting, filing, prosecution, granting, appeal, administrative litigation, and invalidation patent maintenance, assignment, licensing and pledge patent investigation, patent analysis and patent validity analysis patent evaluation, design-around consultation, patent mapping, patent portfolio management domestic and foreign trademark search, filing, prosecution, registration, appeal, and administrative litigation trademark renewal, assignment, licensing and pledge trademark opposition, invalidation and revocation Other IP matters filing for copyright recordation filing for registration for the circuit layout intellectual property merger and acquisition, transferring, licensing, and pledge IP strategy counselling technology analysis Infringement and IP Ligitation patent infringement analysis and damages assessing trademark infringement analysis and damages assessing warning letter drafting and responses and requesting detention for alleged infringing products representing civil and criminal litigation for domestic and foreign intellectual property infringement, and requesting remedies for intellectual property infringement dispute resolution long-term legal conselling for intellectural property related laws More Blog Popular Who's Who Legal Instruct Counsel My newsfeed Save & file View original Follow Please login to follow content. add to folder: My saved (default) Register now for your free, tailored, daily legal newsfeed service. Find out more about Lexology or get in touch by visiting our About page. Trademarks in Taiwan Legal framework What is the primary legislation governing trademarks in your jurisdiction? The laws that govern registration of trademarks include the Trademark Act and its subsidiary legislation (eg, the Enforcement Rules and Standards of Trademark Fees). There are also administrative rules formulated by the Taiwan Intellectual Property Office (TIPO) such as examination guidelines and operational points. Which international trademark agreements has your jurisdiction signed? Taiwan became a member of the World Trade Organization in 2002; the country complies with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) for trademark protection. Which government bodies regulate trademark law? The Competent Authority of the Trademark Act is the Ministry of Economic Affairs (MOEA), and the trademark affairs are administered by the MOEA's IP office. Registration and use Who may apply for registration? Any domestic or foreign natural person, juristic person or business entity (business establishment or firm) that use trademarks to identify the goods or services they offer in trade may file a trademark application in the name of an individual, juristic person or business entity, except for collective trademarks, collective membership marks and certification marks, which are subject to the following rules: applicants for a collective trademark or collective membership mark are restricted to business associations, social organisations or groups that exist as a juristic person; and applicants for a certification mark are restricted to juristic persons, groups or government agencies that are capable of certifying another party’s goods or services. Foreigners from countries that provide reciprocal protection of trademarks or accede to an international treaty to which Taiwan accedes may be granted trademark registration. What may and may not be protected and registered as a trademark? Under the Trademark Act, all forms of sensory signs that are distinctive enough to identify goods (trademarks) or services (service marks) from others can be registered as a trademark. A trademark shall refer to any sign with distinctiveness, which may consist of words, designs, symbols, colours, three-dimensional shapes, motions, holograms, sounds, scents etc, or any combination thereof. In addition to the 'non-traditional' marks, certification marks, collective membership mark and collective trademarks may also be registered. Can trademark rights be established without registration? The Trademark Act in Taiwan provides for trademark rights upon registration. Unregistered trademarks must be well known in order to be eligible for protection provided under the Fair Trade Act. Article 22 of the Fair Trade Act provides that no enterprise shall use a well-known trademark in the same or similar manner on the same or related goods or services that causes confusion. This provision does not apply to registered trademarks. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided? Famous foreign trademarks can be protected only if they are famous in Taiwan. To prove its fame, relevant evidence of domestic use of the trademark should, in principle, be submitted. However, even if a trademark has never been used domestically or its actual domestic use is not extensive, it can still be deemed famous if the objective evidence shows that the fame of the trademark established through extensive use in other countries has reached Taiwan. Therefore, whether the geographical scope of the use of the trademark is closely connected with Taiwan should be considered, including factors such as whether there are frequent economic, trade and travel activities or similar culture and language between that geographical scope and Taiwan. In addition, the fact that the goods of the trademark are extensively covered by newspapers and magazines sold in Taiwan or that the trademark has been widely and frequently discussed online in Chinese can also be used as a factor in considering the fame of the trademark. Supporting evidence of use of a famous trademark must include a representation of the trademark and a date, or be supplemented by any materials that may be used to identify the trademark as used and the date of use. Such evidence of use is not limited to domestic materials. However, in the case of foreign materials, whether they can serve as evidence that the trademark is well known still depends on whether the domestically relevant enterprises or consumers may have come to know the trademark from those materials. The following material may serve as supporting evidence: invoices (at least 10 records per year), brochures, company profile, marketing documents, import and export documents and detailed statistical data of sales for the goods or services; advertisements in domestic or foreign mass media, such as newspapers, magazines or television, including advertising expenditure; documents relating to the sales outlets and channels of trade or types of distribution, including amount of annual sales; appraisal of the mark in markets by traders, ranking in sales amounts, ranking in advertising expenditure or the business status relating to the mark; proof of the year when the mark was adopted or created (eg, date of first use) and proof of continual use of the mark; domestic and or foreign registration information of the trademark; market survey reports issued by credible organisations; documents showing the recognition made by the administrative or judicial authorities (eg, court decision recognising the fame of the mark); or other evidence proving the fame of the mark. The protection provided for a famous mark under the Trademark Act and the Fair Trade Act includes: the right to prevent another from registering or using a similar mark that constitutes a likelihood of confusion or likelihood of dilution of the distinctiveness or reputation of the said famous mark; and the right to prevent another from using names or words contained in a famous mark as one’s company name, business group, association or domain or any other name identifying a business entity that constitutes a likelihood of confusion with the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said famous mark. What are the benefits of registration? A registered trademark entitles its proprietor to statutory exclusivity and remains valid within a given term throughout the entire territory of Taiwan. The proprietor of a registered trademark will: have the exclusive right to use the registered trademark for the goods or services specified in the registration; have the right to authorise use by other people of the registered trademark for the goods or services specified in the registration; have the right to sell the registered trademark or use it as a property to establish a pledge; be able to stop people from using the trademark for the goods or services that might be covered by the trademark registration and thereby cause confusion; be able to request the customs authority to prevent the import or export of goods that infringe the registered trademark; and be able to take a legal action against infringers that use the registered trademark as their own on identical or similar goods or services without the proprietor’s consent. In other words, a registered trademark enables the proprietor to better protect market share or profits by preventing people from counterfeiting it. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply? A scanned copy of a power of attorney simply signed by the applicant is needed for filing a trademark application. A reproduction of the trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible. Electronic filing is available. Trademark searches are not required before filing, but it is recommended to conduct the searches before filing or using a proposed mark. Taiwan adopts the International Classification of goods and services, and each class is divided into several subclasses by the nature of goods. When examining similar goods or services, cross-reference to other relevant classes will be taken into consideration. Therefore, the searches will be conducted for the subclasses of the applicant’s interested goods, as well as their relevant goods in other subclasses. The costs for conducting trademark searches are as follows: a word-mark search in one class: US$285. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark. a logo mark search in one subclass: US$285, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark. a combined word and logo mark in one class: US$435, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? It usually takes eight to nine months to get the trademark application approved and registered, if it goes smoothly. The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of 10 years from the date of registration publication. It generally costs less than US$1,500, including official fees and attorney fees, to file one trademark in one class up to registration, provided the number of designated goods or services for each class is under 20 items. Filing an application in more classes or receiving the office action from the examiner regarding the acceptability of the specification of goods or services or the application as a whole would increase the estimated time and cost of prosecuting a trademark application. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings? From January 2017, TIPO has followed the eleventh edition of the International Classification of Goods and Services (the Nice Classification). Most goods or services listed in the Nice Classification may be claimed, as long as the goods or services are specifically designated. Multi-class applications are available. Filing such an application will be more cost-effective than filing an application for one single class. Although the official fees for filing and registration are calculated by the number of classes rather than per application, the attorney fee for filing a multi-class application will be reduced for each additional class and the attorney fee for obtaining the trademark registration will only be charged per application. Moreover, costs are also reduced after the multi-class application is approved for registration, since official fees and attorney fees related to the recordation of change, assignment, licence or pledge will be calculated per trademark registration. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office? An application for registration of a trademark must be filed with TIPO, where the examiner will begin a formal examination followed by the substantive examination. The examiner may issue an approval of registration, a request for amendment to the application or a preliminary notice of refusal on absolute and relative grounds, including potential conflicts with prior filed applications or prior registered marks before the official refusal of the application. Letters of consent that are not obviously improper are acceptable to overcome the cited hindrance. Under the Trademark Law, similar trademarks can coexist under identical or similar goods or services if consent is obtained from the prior registered mark owners. Identical trademarks can also coexist based on letters of consent, provided the goods or services are not identical. Upon receiving a preliminary notice of refusal, the applicant may submit a response within one month (for domestic applicants) or two months (for foreign applicants), which the examiner will take into account before refusing or approving the application. The applicant may request an extension of time in which to respond, but no further extensions will be granted unless justifiable reasons are provided. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use? Use of a trademark need not be claimed before registration is granted. Accordingly, it is not necessary to submit proof of use to obtain the trademark registration. After the trademark is registered, the proprietor should properly and continuously use the registered mark. Although there is no obligation for the registrant to submit proof of use to TIPO to maintain the registration, the registered mark will become vulnerable to non-use cancellation if the trademark has not been used for more than three consecutive years after registration. Any party suspecting non-use may file a petition of cancellation against the inactive registered mark, and the trademark will be cancelled unless the trademark owner shows proof of use of its trademark. A trademark application that has been filed in a country mutually recognising priority with Taiwan may claim priority within six months following the filing date of which the trademark application was first filed in the given country. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols? ® and ™ are common symbols associated with trademarks but such marking is not mandatory. The ™ designation may be used on the mark to alert the public to claim of use of the trademark regardless of whether a registration application has been filed with TIPO. The ® can be used only after a registration application is approved by TIPO. For foreign registered trademarks, ® can be used to indicate its registration even it is not registered in Taiwan. However, it violates article 21-1 of the Fair Trade Act to put ® on products or packaging of an unregistered mark, and would be asked to take necessary corrective action within the time prescribed in the order and it may be put an administrative penalty of not less than US$1,700 and no more than US$85,000. Is there an appeal process if the application is denied? A final refusal of the application issued by TIPO may be appealed to MOEA's Petitions and Appeals Committee within 30 days after receiving the official decision of refusal. The applicant may further file administrative litigation with the IP court if the appeal decision is unsatisfactory, and finally appeal to the Supreme Administrative Court as a last resort. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding? Taiwan adopts a post-registration opposition procedure. Once the trademark is approved to be registered and published in the Trademark Gazette, any party may file for opposition against the registration with TIPO within three months of the publication of registration. The opposition procedure involves the opposing party filing a notice of opposition with TIPO identifying the basis for the opposition, and subsequently submitting a detailed rationale with evidence to support the opposition. The registrant will have the opportunity to file a counter-statement arguing why the registration should be maintained. The two parties can continue filing arguments and observations back and forth until both are content, and TIPO will issue a decision with grounds based on all the arguments and evidence presented by both parties. In addition, a registered mark that is no longer in the three-month opposition period may be invalidated upon application by an interested party within five years of the date of registration. The grounds for opposition and invalidation are similar to those of registration refusal, among which prior trademark rights, well-known marks and bad-faith filing are the primary bases. Thus, if a brand owner has previously used its trademark on the same or related goods or services anywhere without obtaining registration or establishing reputation in Taiwan, it is still possible to file an opposition or initiate an invalidation action based on the bad faith of the applicant. Invalidation procedures are similar to those for opposition, but the petitioner who files an invalidation against a trademark registration based on the petitioner’s prior trademark rights shall furnish proof that, during the period of three years preceding the date of request for invalidation, the earlier trademark has been used in connection with the goods or services in respect of which it is registered and which he or she cites as justification for their request, or that there are proper reasons for non-use, provided the earlier trademark has at that date been registered for more than three years. Once the opposed trademark’s registration is contested and confirmed by a disposition of the opposition, no invalidation can be filed against such opposed trademark based on the same facts, evidence and grounds as those in the opposition. The official fees for filing the opposition or invalidation against one trademark in one class are US$140 and US$245, respectively. The attorney fee will be charged hourly for reviewing and organising the evidence, drafting and filing the opposition or invalidation brief and the subsequent procedures for reporting the adversary’s responses and filing supplemental briefs and reports, depending on the actual time consumed. Since the two parties can file arguments and observations back and forth in opposition or invalidation proceedings, the relevant costs for completing the proceedings are difficult to estimate, and would be around US$2,200 to US$4,800 (including the official fee) if there are no more than two rounds of arguments between the two parties. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required? The term of protection for a trademark is 10 years from the date of its registration, and the rights of a registered mark can last indefinitely if the renewal fees are paid timely. A renewal request must be made within six months prior to expiry of the 10-year term or within six months (grace period) following the expiry date. Proof of use is not required when filing to renew a registered mark. What is the procedure for surrendering a trademark registration? The owner of a registration may voluntarily surrender his or her registration by filing a request of withdrawal with TIPO. A scanned copy of power of attorney and the Request of Withdrawal Application are required documents. Can trademarks be protected under other IP rights (eg, copyright, designs)? Yes, as long as they fulfil the requirements of other IP rights. For example, the creativity and originality requirements under the copyright, or the creativity and novelty requirements for a design patent. What regime governs the protection of trademarks online and domain names? The Domain Name Dispute Resolution Policy may be applied for resolving the domain name dispute arising out of the trademark. Licensing and assignment May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)? Yes. A trademark may be licensed to multiple licensees. The licence can be recorded through filing a registration application with TIPO. The essence of recordation of a trademark licence is to protect a third party from being damaged by the de facto licensing. A licensee might be damaged if the trademark owner assigns the trademark right to the third party (eg, if the licence is not recorded, the third party will not be bound by the previous licensing relationship). The licensee will have to claim its right from the original trademark owner rather than the third party. Generally, a licensing agreement will include the following provisions: scope, territory and limitation of licence, term and termination, royalty and audit, quality control, warranty and indemnification. What can be assigned? A trademark can be assigned with or without goodwill, and a partial assignment is possible for certain goods or services. A mark need not be assigned in connection with other business assets to be effective. An application for division of a trademark must be filed before the partial assignment can be recorded. What documents are required for assignment and what form must they take? What procedures apply? The required documents for recording the assignment are the power of attorney executed by the assignee and the deed of assignment signed by both parties. Simply signed and scanned copies are sufficient. Either party may apply for the recordation of the assignment with TIPO. Must the assignment be recorded for purposes of its validity? The recordation of assignment with TIPO is not mandatory, but recommended. The assignment becomes effective upon the commencement of a contractual relationship between both parties. Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability? A trademark rights holder may create pledges on the trademark rights in order to secure the rights of its creditors. Any creation, change or extinguishment of a pledge becomes effective upon the commencement of a contractual relationship between both parties, but an unrecorded entry shall have no locus standi against any third party. Multiple pledges on trademark rights may be created based on the value of the property concerned in order to secure the rights of creditors, provided that the sequence of pledge shall be determined by the precedence thereof. Without the licence of the trademark rights holder, a pledgee may not use that trademark. To proceed with the recordation of pledge, the following information and documents are required: the period of pledge creation; pledge agreement and other documents proving the creation of a pledge (in the case of foreign companies, with a Chinese translation, the pledge documents need not be notarised or legalised); and executed power of attorney - simply signed and scanned copies are sufficient. Enforcement What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence? A trademark owner may use border enforcement mechanisms and file civil or criminal action against an alleged infringer. The Taiwan Intellectual Property Court (IP Court) has subject matter jurisdiction over civil and criminal trademark infringement cases. However, a trademark owner may also file the civil or criminal action in a district court. There is criminal liability for a trademark infringer knowingly using an identical or similar trademark for marketing purposes without the consent of the rights holder under the Trademark Act. Therefore, trademark infringement is an offence that is criminally prosecuted. What is the format of the infringement proceeding? There is no discovery in any trial, so the plaintiff or prosecutor must collect sufficient evidence before filing the litigation. Live testimony is allowed in certain circumstances and expert witnesses are allowed in most situations. Generally, there will be three judges in an infringement proceeding. It takes about 200 days for a civil case and 100 days for a criminal case in the IP Court. Generally, the criminal procedure starts from the plaintiff’s filing a complaint with the police or the court or the police’s or prosecutor’s discovery of trademark infringement. After that, the police will investigate evidence, take the suspect’s statements and transfer the case to the prosecutor. Then the prosecutor will determine whether to prosecute the suspect. If so, the case will go into a normal criminal proceeding. What is the burden of proof to establish infringement or dilution? In a civil action, the plaintiff has to prove that it is more likely than not that the defendant wilfully or negligently infringed the trademark. In a criminal action, the prosecutor has to prove that it is beyond reasonable doubt that the defendant wilfully infringed the trademark. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint? A trademark owner may seek any remedy and bring a criminal complaint pursuant to the law. An exclusive licensee may seek the remedies and bring a criminal complaint within the scope of the licence. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution? Regarding the imported infringing goods, the customs authority will actively monitor the imported goods and will inform the trademark owner if they find any suspicious goods. Meanwhile, a trademark owner may apply for monitoring imported goods with the customs authority and submit relevant documents (eg, comparison charts between the genuine goods and counterfeit goods). After the application is granted by the customs authority, the customs authority will pay more attention to the imported goods bearing with the trademark. After receiving the notice from the customs authority regarding the suspicious imported goods, the trademark owner must go to the customs authority to take photos of the suspicious goods and provide an identification report within 24 hours after receiving the goods if said goods are counterfeit. After receiving the identification report, the customs authority will transfer the case to the court and the court will determine whether the imported goods are infringing goods or not. Regarding the exported goods, the trademark owner may apply for attachment of the exported goods after explaining the infringement and providing a bond to the customs authority. However, the exporter may provide twice the bond to release the attachment. After the customs authority attaches the exported goods, the trademark owner must file a lawsuit within 12 days after the attachment (the deadline can be extended to additional 12 days by filing an application with the customs authority). There is criminal and civil liability for an infringer who imports goods infringing the domestic trademark, regardless of whether the imported infringing goods were made or sold in foreign countries. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country? There are no discovery proceedings in Taiwan. Therefore, generally a trademark owner will file a criminal complaint with the police because it is much easier for the police to collect evidence. The trademark owner may also save litigation costs, since the plaintiff in a criminal proceeding is the prosecutor and not the trademark owner. If a trademark owner chooses to file a civil action for some reason, such as that it is difficult to prove the infringer’s wilfulness or the trademark owner aims to acquire damages, it must collect evidence by itself. Effective methods for collecting evidence include hiring a private investigator, conducting due diligence, notarisation of evidence and sample purchase. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal? It takes about six months for the first instance of the IP Court to make a decision on whether to grant a preliminary injunction order (the average grant rate between 2014 and 2016 was about 50 per cent). The appeal with the second instance court takes about another six months. What is the limitation period for filing an infringement action? For the damages claims, the statute of limitation will apply in either of the following circumstance: within two years after the trademark owner learns about the infringement and the infringer; or within 10 years after the infringement. For the permanent injunction claim, the statute of limitation is within 15 years after the infringement. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal? For a civil action, it may cost: US$5,000 to US$7,000 for trial preparation; US$25,000 to US$35,000 for the first-instance trial; and US$20,000 to US$30,000 for the second-instance trial. Under current case law, the losing party bears the court fees, but does not bear the winning party’s attorney fees. What avenues of appeal are available? There are three trial instances: first instance, second instance and the Supreme Court. What defences are available to a charge of infringement or dilution, or any related action? The following defences are available to a charge of infringement or dilution. This is available if the infringer uses the trademark in good faith prior to the application date of the registered trademark. This is available if the asserted infringer’s use of the trademark is a descriptive use: for example, indicating the quality and nature of the goods, is in good faith or such use is necessary for the goods or service to be functional. If the goods have been put on the domestic or foreign market under a registered trademark by the trademark owner or its licensee, the trademark owner is not entitled to claim trademark infringement against such goods, unless such claim is to prevent the condition of the goods been changed or impaired after they have been put on the market or there exist other legitimate reasons. However, if the domestic trademark owner is different from the foreign trademark owner, the aforementioned trademark exhaustion defence cannot be sustained, according to current case law. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist? The remedies for a trademark owner in a civil action are as follows. The trademark owner may choose to calculate the damages based on one of the following methods: damage incurred and lost profit; profits earned by the infringer; if the infringer cannot prove the cost or necessary expense, the sales amount would be deemed as the infringer’s profits; up to 1,500 times the retail price of the infringing goods; if over 1,500 items of infringing goods were found, the amount of damages shall be a lump sum of the market value of the infringing goods; and the equivalent amount of royalty that may be collected from using the trademark under licensing. A trademark owner may file a criminal complaint with the judicial authority. However, the trademark owner cannot claim damages unless it files an incidental civil action during criminal proceedings. Injunctive relief, including a permanent injunction, will be granted to the successful trademark owner by the court in the judgment. A permanent injunction order can include a request to destroy infringing goods. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks? Arbitration is available and enforceable, but not commonly used for trademark matters for the following reasons: it is difficult for the trademark owner to acquire evidence proving the infringement and damages without the assistance of judicial power; and the cost of arbitration is higher than the cost of a criminal action. If both parties agree, the court may arrange a mediation proceeding, in which both parties may negotiate the terms and conditions of settlement. Mediation is occasionally used by the court but is not effective since it is difficult to expect the trademark owner and infringer to have consensus on ceasing trademark use and damages. Update and trends Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction? Regarding the trademark exhaustion defences, recently, more IP Court judgments hold that trademark exhaustion defence cannot be established when the foreign trademark owner is different from the domestic trademark owner because the domestic trademark owner does not acquire any interest from the 'first sale' made by the foreign trademark owner. Filed under Tsai Lee & Chen Patent Attorneys & Attorneys at Law Paris Convention for the Protection of Industrial Property Popular articles from this firm 名称変更後の「専利無効審判事件口頭審理作業要点」が公布日（2024年6月11日）より施行 *, 最高裁による国内外の商標権者が異なる場合の並行輸入の判断について *, trademark registration and use in taiwan *, 植物品種の新規性の判断 *, chroma v. itech, iload & z-fone: how to determine damages due to the act of offering for sale *. If you would like to learn how Lexology can drive your content marketing strategy forward, please email [email protected] . Related practical resources PRO Checklist Checklist: Data subject access rights under the GDPR (UK) Checklist Checklist: Pre-appointment checks to consider when selecting an appointed representative (UK) Checklist Checklist: Drafting internal privacy policies and procedures (USA) Related research hubs International IP Agencies 2.14 I would like to assign my right for a patent application (or patent right). What do I have to do? The assignment of right for a patent application (or patent right) shall become effective between the parties upon mutual agreement of the parties concerned, but it is not effective against any third party unless it is recorded at TIPO. In order to record an assignment for a patent application (or patent right), the following must be submitted to TIPO by the assignor or the assignee together with a NT$2,000 recording fee: (1) a recordation form of assignment of right for a patent application (or patent right); (2) an assignment contract, document of proof for amalgamation or acquisition, or other document(s) of proof with respect to the assignment; (3) documents of proof with respect to the consent of all applicants (or patent owners) if the right for a patent application (or patent right) is jointly owned; (4) a photocopy of gift tax payment certificate, or gift tax exemption certificate, or exclusion from total amount of gifts certificate, or consent to transfer certificate (not required for the assignment of right for a patent application) issued by the competent tax authority if the legal ground for assignment of a patent right is a gift and the assignor is a natural person. Publish Date : 2020-08-26 Update : 2020-09-14 Organization : International Legal Affairs Office Visitors : 1363 ePaper Subscription Subscribe to TIPO's monthly ePaper for the latest IP news 392 IMAGES How to register your trademark in Taiwan Taiwan Trademark Registration Taiwan Trademark Application Process Taiwan Trademark Application Process Trademark Registration Taiwan Taiwan Trademark VIDEO A Midnight Lawyer Tells You About Taiwan's Trademark Reform #trademark #trasomark #diy Macao Trademark Assignment：Comprehensive Analysis POKEMON寶可夢﹣CP1298的大嘴蝠，圈圈紅到快破表 'Made in Taiwan': Taiwanese chart separate identity from China 5種優質特色台灣榮登全球「最佳外派國」第1名 Taiwan global Best assignment *POKEMON寶可夢 COMMENTS Taiwan Intellectual Property Office-Resources-FAQs-Trademarks 1 1.1 Purposes of Trademark Protection International Legal Affairs Office Update Date : 2022-07-25. 2 1.2 Basic Principles of the Trademark Act International Legal Affairs Office Update Date : 2020-12-07. 3 1.3 Differences between Trademarks and Other Intellectual Property Rights International Legal Affairs Office Update Date : 2022-07-25. Taiwan Intellectual Property Office TIPO's Revisions of the Patent Examination Guidelines Took Effect on July 1, 2024: Part II Chapter 1, 3, 11, 14 and Part V Chapter 1. TIPO has revised its examination guidelines for regulatory alignment, reflect changes in examination practices, unify interpretations, and improve examination quality. Revisions include additional exa. Taiwan Intellectual Property Office-Services-Search Trademark Search International Legal Affairs Office 2019-06-27; 2 ... Office Hours: 8:30~12:30, 13:30~17:30 Add : 3F., No. 185, Sec. 2, Xinhai Rd., Da'an Dist., Taipei City 106213, Taiwan (R.O.C.) The site has been optimized for monitors with over 1024x768 resolution, with window maximized Tel : +886-(02)-2738-0007 Fax : +886-(02)-2377-9875 ... Trade Marks Laws and Regulations Report 2024 Taiwan The Taiwan Trademark Act (Trademark Act) was first enacted and promulgated on May 6, 1930. ... 7.1 Can an individual register the assignment of a trade mark? Yes, an individual can register the assignment of a trade mark, and such assignment shall be recorded with the TIPO. Ten Most Frequently Asked Questions Regarding Trademark Registration in The Taiwanese Trademark Act uses the so called first-to-file system so that merely using a trademark on products or services cannot give you any exclusive trademark rights in Taiwan. However, if your trademark is a famous one but not registered in Taiwan, the Taiwanese Trademark Act will still give it some protections, such as rejecting a ... Trademark registration and use in Taiwan The costs for conducting trademark searches are as follows: a word-mark search in one class: US$285. If any identical or similar trademarks are found, the particulars of the marks will be provided ... Understanding the Taiwan trademark system Understanding the Taiwan trademark system. Any legal entity or natural person is eligible to apply for a trademark before the Taiwan Intellectual Office (TIPO). Those without a Taiwanese address must appoint a representative, who, in most cases, is a trademark agent. Under current law, anyone with a domicile in Taiwan can be a trademark agent. Understanding the Taiwan trademark application process and its Trademark oppositions cannot be filed at the application stage as Taiwan has a post-registration opposition system. Anyone can oppose an application through a written pleading and defence procedure. The facts and grounds of an opposition may be the same as the aforementioned absolute and relative grounds in the TIPO's substantial examination. Trademarks in Taiwan Registrables: trademarks, service marks, collective marks, quality marks (certification marks), sound marks, 3D marks, colour marks, holograms marks, movement marks. Time from filing to registration: 10 months. Protection (registration) duration: 10 years from registration date. Examination type: formal and substantive examination. Champion IP Taiwan Trademark. Examination period 4 - 6 months. Substantive examination Yes. Protection term 10 years. Filing fee USD 250! Opposition after grant 3 months. Renewal period 6 months. ... assignment, license or pledge. However, there is a possibility where cost spent on such application is increased. Specifically, a fee for dividing the ... Taiwan Intellectual Property Office-Resources-FAQs-Trademarks-8.2.3 How If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted). ... Office Hours: 8:30~12:30, 13:30~17:30 Add : 3F., No. 185, Sec. 2, Xinhai Rd., Da'an Dist., Taipei City 106213, Taiwan (R.O.C.) The site has been optimized for monitors with ... Taiwan Intellectual Property Office-News-Comprehensive Guide to At the same time, the guideline also provides relevant government resources in hopes of effectively assisting SMEs with difficulties in trademark protection. The guideline mainly consists of the following: 1. The Benefits of Trademarks: Trademark basics, benefits of registering a trademark, and the branding process. 2. Trademark in Taiwan| Trademark registration in Taiwan A trademark may be subject to cancellation in Taiwan if it has not been used within the continuous period of 3 years from registration. Representation by a trademark attorney ; For foreigners, it is recommended to perform the trademark prosecution in Taiwan through a registered Taiwanese trademark attorney. Note Taiwan Advance Patent & Trademark Office In fact, the deletion of paragraph 2 of Article 25 of the previous Taiwan Patent Law does not mean the abolishment of the practice of submitting inventors' assignment documents. It is only a simplification of the procedure to submit assignment. The TIPO presumes that the applicant listed on an application has the right to file the application. Trademarks in Taiwan In Taiwan, if a trademark right owner finds that imported or exported goods are in infringement of its trademark right, it shall lodge a complaint in writing to the customs office at the place of importation or exportation and the following information shall be submitted: 1- Facts of the infringement, and explanations for identification of the ... TAIWAN TRADEMARKS 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 Trademark Taiwan Trademark Initial Application Fee. Trademark or Collective Trademark. NTD$3000 per class of goods or services. All trademark fees are calculated on a "per class basis" for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. In other words, you must pay for each class of ... 卓遠智慧財產有限公司 Trademark Registration. Trademark Search. Trademark Watch. KEY SERVICES HIGHLIGHT. TRADEMARK REGISTRATION. Taiwan. Trademark Application + Registration Fee. NTD $7,800. Read More. ... ACCOLADE IP (TAIWAN) LTD. 7/F, No. 518, Section 7, Zhongxiao East Road, Nangang District Taipei City, Taiwan. Tel +886-2-2651-4976 Email [email protected]. Tun Hwa International Intellectual Property Office We provide professional services for handling intellectual property related matters around the world, particularly for patent and trademark prosecutions in Taiwan and China. We have established long term cooperative business relationships with professional IP and law firms all over the world and built up a global network for IP services. Taiwan Trademark Act of 2021 Unveiled Taiwan Trademark Act of 2021 Unveiled ... TIPO's other decisions for procedural matters such as invalid priority claims, assignment, licensing, pledges, renewal or abandonment. On the other hand ... Trademarks in Taiwan The costs for conducting trademark searches are as follows: a word-mark search in one class: US$285. If any identical or similar trademarks are found, the particulars of the marks will be provided ... 5.5 How to claim trademark priority. 5.5 How to claim trademark priority. Those who have filed a trademark application in a country mutually recognizing priority with the ROC, may claim priority within six months following the date on which their trademark application was first filed in the given country. The filing date of the trademark in the ROC shall be the date when the ... Taiwan Intellectual Property Office-Resources-FAQs-Patents.-2.14 I In order to record an assignment for a patent application (or patent right), the following must be submitted to TIPO by the assignor or the assignee together with a NT$2,000 recording fee: (1) a recordation form of assignment of right for a patent application (or patent right); assignment essay homework paper phd report resume review speech thesis