Whether a branch office can be the applicant of a trademark application is an important issue for foreign companies, which are deeply concerned about whether trademark registration applications can be filed in the name of a branch office in Taiwan. Previously, the Taiwan Intellectual Property Office (TIPO) approved several trademark applications filed in the name of a branch office, but this is no longer the case. Under current practice, the TIPO holds that unless a branch company has an independent legal personality under the laws of the country where such branch office is established, the relevant trademark applications can be filed only under the name of its head office.

In its June 8 2011 announcement,(1) the TIPO specifically provided explanations relating to patent or trademark applications filed by foreign companies. According to the TIPO, the patent or trademark applicant is the party which files the patent or trademark application with the TIPO. As the applicant is an entity with rights and obligations, it must thus have an independent personality, either as a natural person or as a legal entity. A foreign company can file a patent or trademark application in Taiwan without prior approval or permission. However, because the branch office of a foreign company has no independent legal personality, if a patent or trademark application is to be filed, it must be filed in the name of the foreign head office.

The TIPO added that not all countries have the same regulations regarding whether a branch office has independent legal personality if it is established in a place outside the country where the head office is based. If a branch office is deemed to have independent legal personality pursuant to the domestic laws of the country where it is established, it can be a patent or trademark applicant. If a patent or trademark application is filed in the name of such a branch office in Taiwan, notice will be given to inform the branch office that it can choose to change the applicant to its foreign head office or to remain itself as the applicant. If the latter, the branch office will have to provide:

  • documentation evidencing that it has independent legal personality in the place of incorporation; or
  • a declaration that it has independent legal personality in the place of incorporation.

Under the new practice, if the declaration provided by the applicant does not comply with the existing laws of the relevant country or if the TIPO deems it necessary, the applicant will be asked to provide documentation evidencing that it is an independent legal entity pursuant to the domestic laws of the place of incorporation. If no such documentation is provided in time or if the documentation provided is not sufficient to prove such fact, then the applicant of the relevant application should be the head office of the foreign company.

For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300), fax (+886 2 2718 7099) or email ([email protected]).


(1) Ref Zhi-Fa-Zi-10018600350.