Taiwan: Trademarks Comparative Guide

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The Trademark Act.

1.2 How do trademark rights arise (ie, through use or registration)?

Through registration.

1.3 What is the statutory or other source of the trademark registration scheme?

The Trademark Act, the Enforcement Rules of the Trademark Act and various examination guidelines published by the Taiwan IP Office.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Any sign that is distinctive, which may in particular consist of words, devices, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination thereof.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

Distinctiveness is the primary requirement, which refers to a sign that is capable of being recognised by relevant consumers as an indication of the source of goods or services, and of distinguishing the goods or services of one undertaking from those of others.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

A trademark shall not be registered if it is devoid of distinctiveness, as follows:

• The trademark comprises or incorporates an indication which is descriptive of the quality, intended use, raw material, place of origin or related characteristics of the designated goods or services;
• The trademark comprises or incorporates a generic term or name referring to the designated goods or services; or
• The trademark comprises or incorporates other non-distinctive indications, such as slogans, company names or model numbers.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Taiwan IP Office.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

An application filing fee and a registration fee.

3.3 Does the trademark office use the Nice Classification scheme?

Yes.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

‘Class-wide' applications are not allowed; the relevant goods and/or services must be specified.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

No.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes.

3.7 What types of examinations does the trademark office perform other than relative examination?

Distinctiveness and public policy (see question 3.8).

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes. The grounds for refusal of registration regarding public policy include the following:

• The mark is identical or similar to the national flag, national emblem, national seal, military flags, military insignia, official seal or medal of Taiwan, or the state flag of a foreign country, or the armorial bearings, national seal or other state emblem of a foreign country communicated by any member of the World Trade Organization under Article 6ter, paragraph 3 of the Paris Convention;
• The mark is identical to the portrait or name of Dr Sun Yat-Sen or other head of the state;
• The mark is identical or similar to the mark of a government agency of Taiwan, an official exhibition held thereby or a medal or certificate awarded thereby;
• The mark is identical or similar to the armorial bearings, flag, other emblem, abbreviation or name of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for the public interest, and hence is likely to mislead the public;
• The mark is identical or similar to an official sign or hallmark indicating control or warranty adopted by a domestic or foreign country and designated for identical or similar goods or services;
• The mark is contrary to public policy or to accepted principles of morality; or
• The mark is likely to mislead the public as to the nature, quality or place of origin of the goods or services.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

Yes, but such protest is only for the examiner's reference.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No.

3.12 How much time does it typically take from filing an application to the first office action?

Five to seven months.

3.13 How much time does it typically take from filing an application to publication?

Eight to twelve months.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

Yes. An appeal can be filed with the Board of Appeals of the Ministry of Economic Affairs.

4.2 What is the procedure for appealing a trademark office refusal?

The applicant shall submit an appeal along with a written brief, the Taiwan IP Office decision refusing registration and other supporting materials. Generally, the Board of Appeals will review the appeal based on the brief and evidence submitted. The board sometimes holds oral hearings where deemed necessary.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

Yes. The Board of Appeals' decision may be appealed through a trial before the IP Court.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

Any third party.

5.3 What is the timeframe for opposing a trademark application?

Within three months of the publication/registration date of the trademark (publication and registration occur on the same day).

5.4 Which body hears oppositions?

The Taiwan IP Office (TIPO).

5.5 What is the process by which an opposition proceeds?

Opposition proceedings in Taiwan are conducted on a pleading and defence basis, whereby the two parties are allowed to alternately present their arguments in written form. Upon receipt of a brief/counterstatement lodged by one party, TIPO will serve a copy thereof on the other party along with a notification for response before a designated deadline, which is generally within 30 days. This procedure will continue until the two parties have exhausted their views and have no further observations or new evidence to file.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

Yes; see questions 4.2 and 4.3.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

An unregistered trademark is not protected unless it is a well-known trademark under the Fair Trade Act.

6.2 What legal rights are conferred by a trademark registration?

The owner of a registered trademark has the exclusive right to use the trademark in relation to the designated goods or services.

The advance consent of the owner of a registered trademark is required in order to:

• use a mark which is identical to the registered trademark in relation to goods or services which are identical to those for which it is registered;
• use a trademark which is identical to the registered trademark in relation to goods or services which are similar to those for which it is registered, in a way which may create a likelihood of confusion for relevant consumers; or
• use a trademark which is similar to the registered trademark in relation to identical or similar goods or services to those for which it is registered, in a way which may create a likelihood of confusion for relevant consumers.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

No.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

• Cessation or prevention of the infringement;
• Destruction of infringing articles and materials or implements used in the infringing acts; and
• Compensation for damages.

7.2 What remedies are available against trademark dilution?

Protection against dilution is available exclusively for well-known trademarks. Registrants can demand that dilution be stopped or prevented.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

The following actions are considered to constitute trademark infringement and are thus prohibited:

• knowingly using words that are incorporated in another party's well-known registered trademark as the name of a company, business, group or domain, or in any other name that identifies a business entity, in a way which creates a likelihood of confusion for relevant consumers or a likelihood of dilution of the distinctiveness or reputation of that well-known trademark; and
• manufacturing, possessing, displaying, selling, exporting or importing labels, tags, packaging or containers that have not been applied in relation to goods or services, or articles that have not been applied in relation to services, knowing that such articles would likely infringe trademark rights.

7.4 What is the procedure for pursuing claims for trademark infringement?

• Filing a civil action against the infringer; and/or
• Filing a criminal complaint with the police or a prosecutor.

7.5 What typical defences are available to a defendant in trademark litigation?

• No likelihood of confusion;
• Invalidity of the trademark registration;
• Fair use;
• Prior good-faith use; and
• Doctrine of international exhaustion.

7.6 What is the procedure for appealing a decision in trademark litigation?

A decision in trademark litigation may be appealed to the IP Court at second instance. In civil cases, a case may be appealed to the Supreme Court at third instance.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

The initial term of registration is 10 years and the trademark may be renewed indefinitely for subsequent 10-year terms thereafter.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

The application form for renewal and the renewal fee.

8.3 What are the grounds for cancelling a trademark registration?

• The trademark has been altered by the owner in a different form from that in which it was registered, or has been supplemented with additional notes and is now identical or similar to a third party's trademark which is registered for the same or similar goods or services, and there is thus a likelihood of confusion among relevant consumers;
• The trademark has not yet been put to use or use of the trademark has been suspended for a continuous period of not less than three years, without proper reasons, unless the trademark has been put to use by a licensee;
• No appropriate and distinguishing indication has been added where two or more owners use identical trademarks for similar goods or services, or similar trademarks for identical or similar goods or services, due to the transfer of trademark rights, and there is thus a likelihood of confusion among relevant consumers, unless such indication is duly added before the Taiwan IP Office issues an order for revocation;
• The trademark has become a generic mark or term, or a common shape, for the designated goods or services; or
• As a consequence of actual use of the trademark, it is likely to mislead the public as to the nature, quality or place of origin of the goods or services.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

On all of the grounds listed in question 8.3.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

Cancellation proceedings in Taiwan are conducted on a pleading and defence basis, whereby the two parties are allowed to alternately present their arguments in written form. Upon receipt of a brief/counterstatement lodged by one party, TIPO will serve a copy thereof on the other party along with a notification for response before a designated deadline, which is generally within 30 days. This procedure will continue until the two parties have exhausted their views and have no further observations or new evidence to file.

It usually takes six months for TIPO to render its decision.

8.6 What is the procedure for appealing a decision cancelling a registration?

See questions 4.2 and 4.3.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

No.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

Recordal is not compulsory, but is recommended for the licence to have effect against third parties.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

No.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

If the foreign trademark is a well-known trademark, it will be protected under Fair Trade Act.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

No.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.