Trademark in Taiwan. Taiwan is not only known for a natural beauty, but also known as a “Asian dragon” with a developed economy in Asia. In addition to the strong development of occupations mainly based on rich natural resources such as agriculture, forestry and fishery, Taiwan also develops rapidly in modern commerce, engineering and electronics. Therefore, many investors intend to invest in this fat market. In particularly, these investors’ first step is to find the way to obtain the protection for their trademark in this country. Consequently, this article shall answer your questions about registration trademark in Taiwan.
Definition of trademark in Taiwan
“Trademark” is also called brand and is used for distinguishing the specific source of goods or services of one business from those of others. To avoid confusion, to protect the interests of trademark rights owners and the interest of consumers, to prevent unfair competition practices and to make a convenient place for the development of industrial or commercial enterprises.
According to the Article 18 of Taiwan Trademark Act, “Trademark in Taiwan” is “signs of which trademark may consist; distinctiveness. A trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.”
Note: Unlike Vietnam, the Trademark Act of Taiwan has protection trademark provisions for sounds while Intellectual Property Law of Vietnam still has no this kind of regulations.
Under the law of Taiwan, trademark registration gives related subjects the right to exclude other parties from using a similar mark or the right to transferring the same mark to others. Apart from traditional trademarks that are affixed on goods or their packages and containers, trademarks may also include some special forms such as hologram, color and sound marks.
- Hologram Trademark: A three-dimensional trademark is a sign consisting of a three-dimensional shape formed in a three-dimensional space. Three-dimensional trademarks also have functions like any other types of trademark, it is to help consumers to distinguish the source of different goods or services. For example, if the shape of the goods or their package or the containers can identify the source of the goods, it may be registered as a three-dimensional mark.
- Color trademark: A color trademark in Taiwan is an unusual trademark in which at least one color is used to perform the traceability function of goods or services. If a color can fully identify the source of goods or services by itself (not combined with words, images or symbols), it may be registered as a color trademark.
- Sound Trademarks: A sound trademark is the sound that can allow consumers to identify the source of goods or services. For example, a short advertising jingle, rhythms, human voices, birds singing, bells, or animal calls may be registered as a sound trademark.
Types of trademark in Taiwan
In addition to common trademarks, it remains 03 types of trademark in Taiwan, it is “Collective mark”, “Collective membership mark” and “Certification mark”.
Collective mark in Taiwan
According to Article 85 of Taiwan Trademark Act: “A collective mark is a sign that serves to identify the membership of members in an association, society or any other group which is a juridical person and distinguish such members from those who are not members.”
Collective membership mark
A collective membership mark is a sign used to identify the membership of a legal entity from that of non-members. Members of the group are allowed to use the collective membership mark to identify their membership after registered.
Certification trademark in Taiwan
Example: “Scotch Whisky” has been registered as a certification mark in Taiwan. This allow the trademark holder prevent to prevent a third party whose product does not confirm to the standards from using it.
Principles of trademark registration
First-to-file principle for registering trademark in Taiwan
In cases there are many registration applications with identical or confusingly similar industrial property objects, the protection title shall only be granted to the valid application with the priority date or the earliest filing date among eligible applications for the protective certificate.
In cases there are many applications for registration that all satisfy the same protection conditions and have the same priority date or the earliest filing date, the protective certificate shall only be granted to only one of those applications as the agreement all the applicants. If the applicants cannot reach agreement, all applications will be denied. Thus, according to the principle of First-to-file, the law only protects the entity who filed the earliest registration for their inventions, trademarks, industrial designs, etc, not the first to create it.
First-to-use or the First-to-Use Principle can be understood as industrial property rights are determined by the people who first use it, not the first to apply. When considering two or more applications for registration for the same mark or when a dispute arises in the trademark registration, the competent authority shall verify the time of using the trademark of the related parties. Any party who can prove that the use of its mark is in advance will be granted a protection registration for the mark.
Note: Like Vietnam, Taiwan is a first-to-file country. This mean that if there is a dispute between you and another party over a trademark, whoever filed for registration first will generally have superior rights, regardless of who developed or first used the trade mark.
Required documents for filing a new trademark in Taiwan
- 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.
– The official language of the Taiwan IP Office is Traditional Chinese.
– Taiwan is not a member of the Madrid Agreement or the Madrid Protocol, it is not possible to perform an international registration to Taiwan. In order to get a trademark registration in Taiwan, foreign applicants must file an independent national application.
Trademark registration process in Taiwan
After receiving a trademark registration application, the Taiwan IP Office shall perform “Formality Examination” to check whether the application can satisfy the formality requirements.
The Taiwan Intellectual Property Office shall examine your application on absolute and relative basis and they shall reject your trademark registration application if it is deemed not to meet the registrable requirements.
Note: The Trademark Examiner shall issue a refusal notification if the trademark registration application of the applicant cannot be approved. The applicant has opportunities to present their arguments or modifications to the description of the goods / services. In most cases, the applicant shall be given one or two attempts to overcome all remaining objections.
When the Taiwan IP Office finds that the trademark registration application has enough conditions to be approved, the trademark examiner will issue an Approval Decision. The applicant must pay the registration fee within 2 months. Then, the Taiwan IP Office shall grant and publish the trademark in the Trademark Gazette. A trademark certificate will also be sent to the applicant.
Any person has right to file an opposition to registration of a trademark to Taiwan IP Office within 03 months from the date of publication of the trademark in the Trademark Gazette. The objection may be based on reasons such as a mark describes goods / services or a mark that is similar to a earlier registered mark.
Fees of registering trademark in Taiwan
- for a trademark or collective trademark registration, the fee is NT$2,500 per class;
- for a collective membership mark or certification mark registration, the fee is NT$2,500.
Note: For those who chose to pay registration fees by two installments and already paid the first installment prior to the enforcement of the articles of the Taiwan Trademark Act amended on May 31, 2011, the following are the amount of second installment shall be paid:
- for a trademark or collective trademark registration, the amount is NT$1,500 per class;
- for a collective membership mark or certification mark registration, the amount is NT$1,500.
Trademark search in Taiwan
Trademark search is not a compulsory step in the trademark registration procedures in Taiwan but the trademark search has many important benefits:
- Helping the applicant determine the protection ability of the trademark before filing the registration application, avoiding wasting time and cost.
- From the determination of the ability to protect, the search is an effective tool for business investors to develop plans and strategies to promote the company’s brand;
Priority right principles
Under the Trademark Act of Taiwan, an applicant who has appropriately filed a trademark registration application in a country which has mutual recognition of priority rights with the Republic of China (ROC), or applied such application with a member of the World Trade Organization (WTO), may require a priority right, for the purposes of registering the same trademark in the ROC for some or all the same goods or services, within 06 months from the day following the date of filing of the first such application.
For a foreign applicant of a country which is not a member of the WTO nor a country having mutual recognition of priority rights with the ROC, may require a priority right if he/she is domiciled or has a enterprise in the territory of a country which has mutual recognition of priority rights with the ROC or in the territory of a member of the WTO.
A applicant who requires a priority right shall file a written statement to that become effective concurrently with the application which shall involve the following:
– The date of filing of the first application
– The country or the member of the WTO in which the first application was made.
– The application number of the first application
A copy of the application certified as admitted by the country or the member of the WTO must be submitted by the applicant within 03 months from the day following the date of filing of the application.
The duration of trademark rights in Taiwan
According to the Taiwan Trademark Act, the duration of trademark rights shall be 10 years from the date of registration. The duration of trademark rights may be renewed for another ten years by filing an application to register the renewal of the duration.
However, if the applicant fails to pay a trademark registration fee or pay the remainder thereof within the relevant period, trademark rights shall be extinguished where five years elapse from the date of registration and establishment of trademark rights or the date of registration to renew the duration.