An extract from The Trademarks Law Review, 5th Edition
Registration of marksi Inherent registrabilityFiling
The TIPO accepts any registration application for a mark having distinctiveness. A trademark may consist of words, devices, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination thereof.
The registration procedure is summarised as follows: (1) the applicant submits the application to the TIPO; (2) the TIPO formally examines the application; (3) if the TIPO provides an official response (known as an 'office action') objecting to the registration, the applicant must file a written response or submit evidence to overcome the objection; and (4) if the trademark application is allowed, the trademark will be published in the Trademark Gazette. If there are no oppositions within three months of the date of publication, the trademark registration certificate will be issued.
For filing a single trademark application, the service fee is generally NT$10,000 for the first class and NT$6,000 per class for subsequent classes. To claim priority, the service charge is about NT$2,000. For belated filing of the required documents, the service fee is NT$1,500. For filing a single trademark application so far as the goods in any of Classes 1 to 34 are concerned, the official fee will be NT$3,000 for under 20 items of the designated goods for each class, with a NT$300 discount for e-filing. For any item above 20 for each class, the official fee will be NT$200 per item. So far as the services in any of Classes 35 to 45 are concerned, the official fee will be fixed at NT$3,000 per class, except in cases designated as having a 'retail' connection, for which the basic item number is five and the excess official fee thereafter is NT$500 per item.Official correspondence fees
After submitting the application, the fee for serving notice that the application has been allowed is NT$2,000, although there are various other possible responses, the fees for which vary from NT$8,000 to NT$20,000 at each instance.Registration fees
For the first phase registration, the official fee will be a multiple of NT$1,000 based on the number (1 to 45) of the designated classes even though this registration is a single multiple-class registration. The service fee rendered for paying the registration fees and forwarding the certificate of trademark is therefore NT$6,000 for the first class and NT$3,600 per class from the second class, or classes, onwards.Disbursement
The disbursement is generally around NT$2,000.Time frame
There is no standard examination period for an application. The examiner might issue an office action shortly after the filing date, but it is equally legal for him or her to issue the office action as much as one year after the filing date. The TIPO will only take action automatically to notify the examiner to speed up the examination 18 months after the filing date. Nevertheless, a range of eight months to one year is a fairly accurate prediction.
Upon receiving notice that the application has been allowed, the registration fees must be paid within two months to obtain the certificate of registration and secure its publication in the Trademark Gazette. In addition, following publication, there is a three-month period in which to register oppositions.ii Prior rights
A trademark shall not be registered if it is identical or similar to another person's earlier-used trademark and if it is to be applied to goods or services identical or similar to those to which the earlier-used trademark is applied; and if the applicant is aware of the existence of the earlier-used trademark because of contractual, regional or business connections or any other relationship with the owner of the earlier-used trademark, and files the application for registration with intent to imitate the earlier-used trademark. This rule, however, does not apply if the owner of the earlier-used trademark consents to the registration application.
A registered trademark shall not entitle the proprietor to prohibit a third party from using bona fide an identical or similar trademark on goods or services identical or similar to those for which the registered trademark is protected if the third party had already been a user prior to the filing date of the registered trademark, but the third party's use should be limited to the original goods or services used by the third party. In addition, the owner of the registered trademark is entitled to request the party who uses the trademark to add an appropriate and distinguishing indication.iii Inter partes proceedings
Anyone may file an opposition to the registration of a trademark with the TIPO within three months of the day following the date of publication of the registration. The petitioner can file the opposition when the mark is (1) descriptive, (2) generic, (3) functional, (4) contrary to public policy or morality, (5) likely to mislead the public as to the nature, quality or place of origin of the goods or services, (6) identical or similar to a geographical indication for wines or spirits, and designated goods that are identical or similar to wines or spirits under the geographical indication, (7) likely to cause confusion, (8) likely to cause confusion and dilution of the distinctiveness or reputation of a well-known trademark or mark, or (9) the applicant intends to imitate an earlier-used trademark.
An interested party may file for cancellation with the TIPO, or a trademark examiner may submit a proposal to the TIPO for cancellation, of a trademark registration on the basis of, at least, the grounds set out in Article 57(1) of the Trademark Act, which are almost the same as the grounds for filing an opposition.
Anyone may file for a revocation of a registration of a trademark with the TIPO, (1) where the trademark has been altered by the proprietor such that it is different from its original registration and supplementary notes, and whereby the trademark is identical or similar to another person's registered trademark in relation to goods or services that are identical or similar to those for which another person's registered trademark is designated, and hence there is a likelihood of confusion for relevant consumers; (2) where the trademark has not yet been put to use or this use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee; (3) where no appropriate and distinguishing indication has been added (unless the indication is subsequently added before the disposition of revocation rendered by the TIPO, eliminating any likelihood of confusion); (4) where the trademark has become a generic mark or term, or common shape for the designated goods or services; or (5) where, in consequence of the actual use of the trademark, the trademark is likely to mislead the public as to the nature, quality or place of origin of the goods or services.iv Appeals
The applicant may first appeal the refusal decision to the Appeal Review Committee of the Ministry of Economic Affairs. If the applicant is dissatisfied with the committee's decision, it may further appeal to the IP Court, where there are two possible outcomes. If the applicant is dissatisfied with the IP Court's decision, it may appeal the matter further to the Supreme Administrative Court to pursue a final decision.