TAIWAN

• Kinds of Trademarks registrable in TAIWAN

  • Following indications may be used as Trademarks in Taiwan:

    • Packaging design
    • 3D objects
    • Sound marks
    • Smell marks
    • Word marks
    • Figure marks
    • Symbols
    • Colour marks • Devices • Holograms Combination of the above for both goods and services in any language.

    Types of Marks registrable:

    1. Collective marks
    2. Certification marks
    3. Marks for non-commercial purposes
    4. Service marks
    5. Well Known marks
• Requisites for a Trademark to be registrable in TAIWAN

  • Trademarks must contain the following essential requirements to be registrable in Taiwan:

    • The mark should be non-descriptive
    •  Marks should be non generic
    • The proposed marks should not contain the name, shape, quality, function or other description and / or attributes of the goods themselves
    • Marks should be original thereby ensuring they are not similar to someone else’s registered mark
    • Proposed marks should not be or bear resemblance to a well known mark
    • The mark should not be deceptive or misleading that deceives consumers regarding content, nature, quality or place of origin of the goods.
    • The proposed mark should not contravene in any way the Trademark Act, the law of the land, public morality.
• Kinds of Trademarks not registrable in TAIWAN

  • Applicants should bear in mind that the following will not be registrable as Trademarks in Taiwan:

    1. Trademarks that do not represent a mark as set forth by law.
    2. Trademarks related to public property or are not distinguishable.
    3. Symbols that represent the form or cover of goods if its nature, function or packaging required thereof as an intrinsic part.
    4. Trademarks contrary to public order or morals as well as those the use of which is prohibited under the national law, or bilateral or multilateral agreements to which Taiwan is a party.
    5. Trademarks comprising a simulation or imitation of official logos, flags, other logos, abbreviated names, symbols, signs or official hallmarks used for the purposes of control and guarantee by a country or an intergovernmental organization established under an international agreement, unless the competent authority has licensed such state or organization to do so.
    6. Trademarks which would mislead the public or commercial society with regard to the nature, quality or source of goods and services and other related characteristics.
    7. Trademarks which exclusively or partially constitute an indication that would involve confusion regarding the geographical origin of certain goods or services. In case such symbols have been illegally registered as a mark, the use of that geographical indication would be hindered by third parties entitled thereof.
    8. Trademarks similar or identical to a mark or a trade name well-known in Taiwan and have been used for similar or identical goods belonging to another institution to the extent that causes confusion between both of them, or symbols which are a translation of another mark or trade name.
    9. Trademarks identical or similar to a mark that has been the subject matter of a registration application or a registration including goods or services identical or similar to those for which the manufacturing mark or trademark has been registered which would result in confusion.
    10. Colours on their own and geometric shapes which are not novel.
    11. Caricatures, portraits, drawings, cartoons, expressions ridiculing belittling people and objects worthy of respects and status.

    TrademarkCopia through its associate Law Firms and Lawyers in Taiwan is at hand to help you with trademark registration and prosecution.

• Trademark Search in TAIWAN

  • A search for the proposed mark at the TIPO is recommended to ensure there is no conflict with prior registered and/or pending marks.

    TIPO’s electronic application and examination system is still in the planning stage. Also, trademark applications are not received over fax.

    A search is useful in determining the following:

    1. Conflict with existing trademarks.
    2. Confirm validity of the proposed trademark.
    3. Evaluate the filing of the application and assess the risk of nullity and 3rd party claims.
    4. Strategise on the kind of mark to file regarding the denominations such as figurative, coloured, black & white etc.
    5. Search is a useful tool prior to filing of applications since search concerning prior pending marks carried out by the Trademarks Office of Taiwan.

    Our Attorneys are at hand to assist you with searches and provide opinions about registrarbility of the proposed / coined trademark in Taiwan.

• Trademark Filing in TAIWAN

  • Filing is done with the Trademark office of Taiwan.

    Applicant has to furnish the following documentation for filing:

    1. Name of the applicant
    2. Logo (if any) in B/W or Colour
    3. Address along with nationality of the Applicant
    4. Classes in which Registration is sought.
    5. Power of Attorney (POA)
    6. Priority details if any.
    7. Details regarding Goods and Services for which registration sought
       (Goods and Services classified as per NICE classification)

    TRADEMARKCOPIA.COM will assist you with the following:

    • Filings
    • Infringement & Opposition Actions
    • Renewals
    • License and Assignment procedures
    • Trademark Watch Services
• Trademark Examination in TAIWAN

  • Once the trademark application is filed with the IP office, it is assessed to confirm that it meets the requirements of registration as per the trademarks act.

    Substantial examination is carried out as regards the proposed mark concerning its registrability, similarity to prior pending and registered marks, specific aspects relating to the unregistrable conditions of the trademark if any.

    The applicant has a stipulated period of time from the date of the examiner’s report to respond to compliances if any within the stipulated time, the trademark application is deemed abandoned.

• Trademark Publication & Opposition in TAIWAN

  • Post examination of the trademark application the applicant is served with an approval decision.

    Upon receipt of payment of registration fee, the mark is published to which, interested third parties may file their opposition regarding registration of the trademark within three months from the date of publication.

    TrademarkCopia through its experienced Trademark Lawyers and Trademark Attorneys in Taiwan can comprehensively assist you with trademark opposition and prosecution.

• Trademark Registration in TAIWAN

  • Trademark registration in Taiwan is valid for 10 years from the date of filing after which it can be frequently renewed for another 10 years.

     

    Rights of Trademark Owners:

    Trademarks may be:

    1. Transferred in whole or in part
    2. Inherited – Assigned and licensed.
    3. Mortgaged and creditors may seize such trademarks belonging to their debtors.
    4. Licensed to natural or legal persons
    5. Prevented from unauthorized usage by third parties
    6. The subject of appropriate redressal from a court of law upon infringement
• Trademark Usage in TAIWAN

  • Pre – Registration: Taiwan follows first to file doctrine, hence usage prior to filing does not provide any advantage as such.

    Post – registration of the mark, it has to be continuously used for 3 years, otherwise it could be suspended and / or cancelled for non-usage.

    Apart from the above the applicant has to keep the following in mind:

    • Timely renewal of the marks
    • Recordal of licensing of the mark if the same is relevant
    • Refraining from changing the substantial nature of the mark and / or making additional notes to the trademark whereby it is rendered similar to an already existing trademark.
• Trademark Cost of Registration in TAIWAN

  • Please write mail for the cost of registration of trademark in Taiwan to the mail address given below:

    contact@trademarkcopia.com