TRADEMARK LAW OF TAIWAN

Trademark rights in Taiwan are governed by the Trademark Act and the Enforcement Rules of the Trademark Act. The competent authority for the application and registration of trademarks is the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs. Types

 

Further, Article 22 of the Fair Trade Act provides supplemental remedies against unfair competition violations for the holders of well-known trademarks. However, pursuant to the most recent amendments, the Fair Trade Act no longer grants protection to registered trademarks, which fall under the Trademark Act.

 

UNREGISTERED TRADEMARK 

As stated in Articles 30(11) and (12) of the Trademark Act, well-known unregistered marks can preclude later registration of identical or similar marks without permission of the rights holder, where the later registration will dilute the distinctiveness of the mark; further, prior used unregistered marks may also preclude registration of identical or similar marks without permission of the rights holder, where the later registration is made in bad faith.

 

 

Well-known unregistered marks are also protected under the Fair Trade Act. Under Article 22 of the act no enterprise may use a commonly known trademark in the same or similar manner for the same or similar category of merchandise.

 

 

REGISTRABLE MARKS

Under Article 18 of the Trademark Act, any form of sensory sign that is distinctive enough to identify goods or services from others can be registered as a trademark. A trademark may refer to any distinctive sign, which may consist of words, designs, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination thereof. A distinctive sign must be recognisable by relevant consumers as an indication of the source of goods or services and distinguish goods or services of one undertaking from those of other undertakings.

 

Articles 29 and 30 of the Trademark Act outline the absolute and relative grounds for refusal of a trademark registration. Trademark protection will be denied to any mark that:

• consists exclusively of:

  • a description of the quality, intended purpose, material, place of origin or relevant characteristics of the goods or services; or

  • a generic mark, term or other sign which is devoid of distinctiveness;

• is exclusively necessary for the goods or services to be functional;

• is identical or similar to:

  • a geographical indication for wines or spirits;

  • a registered trademark or earlier filed, well-known or earlier used trademark covering similar or identical goods or services, belonging to another party;

  • the national flag, emblem or seal, or military flag, insignia, seals or medals, of Taiwan;

  • the state flags, armorial bearings, national seals or other state emblems of any other country;

  • the portrait or name of founding father Sun Yat-Sen or the present head of state of Taiwan;

  • the mark of a government agency of Taiwan or official exhibition, or any medal or certificate awarded thereby;

  • the armorial bearings, flags, other emblems, abbreviations or names of international intergovernmental organisations or well-known public interests; or

  • official signs or hallmarks indicating control and warranty adopted by Taiwan or any other country;

• is contrary to public policy or pinciples of morality;

• is likely to mislead the public as to the nature, quality or place of origin of the goods or services;

• contains another person’s portrait or well-known name, stage name, pseudonym or alternative name;

• contains the name of a well-known legal entity, business or group; or

• infringes another party’s copyright, patent right or other right.

 

Further, no trademark that contains a functional or indistinctive element can be registered unless the applicant disclaims any exclusive right to such element.

 

TERM OF PROTECTION

The initial registration is effective for 10 years from the filing date of the application for registration.

 

Each renewal is effective for 10 years from the expiration of the last registration. Application for renewal can be made in the 90 days before the registration expires.

 

PROCEDURE OF REGISTRATION

An application for trademark registration must be filed at the TIPO, where it will first be examined with regard to formal requirements. A single application must relate to a single trademark, which may designate goods or services classified in two or more classes. Series trademarks may not be filed.

 

A TIPO-appointed examiner will inspect the application for grounds of refusal. The examiner may issue an approval, a request for amendment (issued for failure to meet formal requirements) or a preliminary notice of disapproval (before the official rejection of the application).

 

Taiwan adopts a post-registration opposition procedure. Under Article 48 of the Trademark Act, once the trademark is registered and published in the Trademark Gazette, any person may file an opposition with the TIPO up to three months after publication.

The grounds for opposition are similar to those for refusal.

 

The opposing party must submit a written opposition stating the facts and reasons for opposition. On receiving the opposition brief, the registrant must respond within 30 to 60 days. Once the registration of a trademark is contested by an opposition, no invalidation may be filed against the opposed trademark based on the same facts, evidence and grounds as those in the opposition.

 

Once a trademark is accepted for registration, the registration fee must be paid within two months of receiving the notice of acceptance; if not, a doubled registration fee may be submitted within six months of the two-month expiration date. Once the registration fee is submitted, the registration will be published in the Trademark Gazette and the trademark certificate will be issued.

 

Under Article 33 of the Trademark Act, both unopposed trademarks and opposed trademarks which were registered after examination for opposition are protected for 10 years from publication in the Trademark Gazette.