Trademark registration and use in Taiwan

Registration and use

Who may apply for registration?

Any domestic or foreign natural person, juristic person or business entity (business establishment or firm) that use trademarks to identify the goods or services they offer in trade may file a trademark application in the name of an individual, juristic person or business entity, except for collective trademarks, collective membership marks and certification marks, which are subject to the following rules:

• applicants for a collective trademark or collective membership mark are restricted to business associations, social organisations or groups that exist as a juristic person; and
• applicants for a certification mark are restricted to juristic persons, groups or government agencies that are capable of certifying another party’s goods or services.

Foreigners from countries that provide reciprocal protection of trademarks or accede to an international treaty to which Taiwan accedes may be granted trademark registration.

What may and may not be protected and registered as a trademark?

Under the Trademark Act, all forms of sensory signs that are distinctive enough to identify goods (trademarks) or services (service marks) from others can be registered as a trademark.

A trademark shall refer to any sign with distinctiveness, which may consist of words, designs, symbols, colours, three-dimensional shapes, motions, holograms, sounds, scents etc, or any combination thereof.

In addition to the 'non-traditional' marks, certification marks, collective membership mark and collective trademarks may also be registered.

Can trademark rights be established without registration?

The Trademark Act in Taiwan provides for trademark rights upon registration. Unregistered trademarks must be well known in order to be eligible for protection provided under the Fair Trade Act. Article 22 of the Fair Trade Act provides that no enterprise shall use a well-known trademark in the same or similar manner on the same or related goods or services that causes confusion. This provision does not apply to registered trademarks.

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous foreign trademarks can be protected only if they are famous in Taiwan. To prove its fame, relevant evidence of domestic use of the trademark should, in principle, be submitted. However, even if a trademark has never been used domestically or its actual domestic use is not extensive, it can still be deemed famous if the objective evidence shows that the fame of the trademark established through extensive use in other countries has reached Taiwan. Therefore, whether the geographical scope of the use of the trademark is closely connected with Taiwan should be considered, including factors such as whether there are frequent economic, trade and travel activities or similar culture and language between that geographical scope and Taiwan. In addition, the fact that the goods of the trademark are extensively covered by newspapers and magazines sold in Taiwan or that the trademark has been widely and frequently discussed online in Chinese can also be used as a factor in considering the fame of the trademark.

Supporting evidence of use of a famous trademark must include a representation of the trademark and a date, or be supplemented by any materials that may be used to identify the trademark as used and the date of use. Such evidence of use is not limited to domestic materials. However, in the case of foreign materials, whether they can serve as evidence that the trademark is well known still depends on whether the domestically relevant enterprises or consumers may have come to know the trademark from those materials. The following material may serve as supporting evidence:

• invoices (at least 10 records per year), brochures, company profile, marketing documents, import and export documents and detailed statistical data of sales for the goods or services;
• advertisements in domestic or foreign mass media, such as newspapers, magazines or television, including advertising expenditure;
• documents relating to the sales outlets and channels of trade or types of distribution, including amount of annual sales;
• appraisal of the mark in markets by traders, ranking in sales amounts, ranking in advertising expenditure or the business status relating to the mark;
• proof of the year when the mark was adopted or created (eg, date of first use) and proof of continual use of the mark;
• domestic and or foreign registration information of the trademark;
• market survey reports issued by credible organisations;
• documents showing the recognition made by the administrative or judicial authorities (eg, court decision recognising the fame of the mark); or
• other evidence proving the fame of the mark.

The protection provided for a famous mark under the Trademark Act and the Fair Trade Act includes:

• the right to prevent another from registering or using a similar mark that constitutes a likelihood of confusion or likelihood of dilution of the distinctiveness or reputation of the said famous mark; and
• the right to prevent another from using names or words contained in a famous mark as one’s company name, business group, association or domain or any other name identifying a business entity that constitutes a likelihood of confusion with the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said famous mark.

What are the benefits of registration?

A registered trademark entitles its proprietor to statutory exclusivity and remains valid within a given term throughout the entire territory of Taiwan. The proprietor of a registered trademark will:

• have the exclusive right to use the registered trademark for the goods or services specified in the registration;
• have the right to authorise use by other people of the registered trademark for the goods or services specified in the registration;
• have the right to sell the registered trademark or use it as a property to establish a pledge;
• be able to stop people from using the trademark for the goods or services that might be covered by the trademark registration and thereby cause confusion;
• be able to request the customs authority to prevent the import or export of goods that infringe the registered trademark; and
• be able to take a legal action against infringers that use the registered trademark as their own on identical or similar goods or services without the proprietor’s consent.

In other words, a registered trademark enables the proprietor to better protect market share or profits by preventing people from counterfeiting it.

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A scanned copy of a power of attorney simply signed by the applicant is needed for filing a trademark application.

A reproduction of the trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible.

Electronic filing is available.

Trademark searches are not required before filing, but it is recommended to conduct the searches before filing or using a proposed mark.

Taiwan adopts the International Classification of goods and services, and each class is divided into several subclasses by the nature of goods. When examining similar goods or services, cross-reference to other relevant classes will be taken into consideration. Therefore, the searches will be conducted for the subclasses of the applicant’s interested goods, as well as their relevant goods in other subclasses.

The costs for conducting trademark searches are as follows:

• a word-mark search in one class: US$285. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.
• a logo mark search in one subclass: US$285, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.
• a combined word and logo mark in one class: US$435, and US$135 per relevant subclass. If any identical or similar trademarks are found, the particulars of the marks will be provided and the fees will be US$20 per mark.

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It usually takes eight to nine months to get the trademark application approved and registered, if it goes smoothly. The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of 10 years from the date of registration publication. It generally costs less than US$1,500, including official fees and attorney fees, to file one trademark in one class up to registration, provided the number of designated goods or services for each class is under 20 items.

Filing an application in more classes or receiving the office action from the examiner regarding the acceptability of the specification of goods or services or the application as a whole would increase the estimated time and cost of prosecuting a trademark application.

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

From January 2017, TIPO has followed the eleventh edition of the International Classification of Goods and Services (the Nice Classification). Most goods or services listed in the Nice Classification may be claimed, as long as the goods or services are specifically designated.

Multi-class applications are available. Filing such an application will be more cost-effective than filing an application for one single class. Although the official fees for filing and registration are calculated by the number of classes rather than per application, the attorney fee for filing a multi-class application will be reduced for each additional class and the attorney fee for obtaining the trademark registration will only be charged per application. Moreover, costs are also reduced after the multi-class application is approved for registration, since official fees and attorney fees related to the recordation of change, assignment, licence or pledge will be calculated per trademark registration.

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

An application for registration of a trademark must be filed with TIPO, where the examiner will begin a formal examination followed by the substantive examination. The examiner may issue an approval of registration, a request for amendment to the application or a preliminary notice of refusal on absolute and relative grounds, including potential conflicts with prior filed applications or prior registered marks before the official refusal of the application. Letters of consent that are not obviously improper are acceptable to overcome the cited hindrance. Under the Trademark Law, similar trademarks can coexist under identical or similar goods or services if consent is obtained from the prior registered mark owners. Identical trademarks can also coexist based on letters of consent, provided the goods or services are not identical.

Upon receiving a preliminary notice of refusal, the applicant may submit a response within one month (for domestic applicants) or two months (for foreign applicants), which the examiner will take into account before refusing or approving the application. The applicant may request an extension of time in which to respond, but no further extensions will be granted unless justifiable reasons are provided.

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark need not be claimed before registration is granted. Accordingly, it is not necessary to submit proof of use to obtain the trademark registration. After the trademark is registered, the proprietor should properly and continuously use the registered mark. Although there is no obligation for the registrant to submit proof of use to TIPO to maintain the registration, the registered mark will become vulnerable to non-use cancellation if the trademark has not been used for more than three consecutive years after registration. Any party suspecting non-use may file a petition of cancellation against the inactive registered mark, and the trademark will be cancelled unless the trademark owner shows proof of use of its trademark.

A trademark application that has been filed in a country mutually recognising priority with Taiwan may claim priority within six months following the filing date of which the trademark application was first filed in the given country.

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

® and ™ are common symbols associated with trademarks but such marking is not mandatory. The ™ designation may be used on the mark to alert the public to claim of use of the trademark regardless of whether a registration application has been filed with TIPO. The ® can be used only after a registration application is approved by TIPO. For foreign registered trademarks, ® can be used to indicate its registration even it is not registered in Taiwan. However, it violates article 21-1 of the Fair Trade Act to put ® on products or packaging of an unregistered mark, and would be asked to take necessary corrective action within the time prescribed in the order and it may be put an administrative penalty of not less than US$1,700 and no more than US$85,000.

Is there an appeal process if the application is denied?

A final refusal of the application issued by TIPO may be appealed to MOEA's Petitions and Appeals Committee within 30 days after receiving the official decision of refusal. The applicant may further file administrative litigation with the IP court if the appeal decision is unsatisfactory, and finally appeal to the Supreme Administrative Court as a last resort.

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Taiwan adopts a post-registration opposition procedure. Once the trademark is approved to be registered and published in the Trademark Gazette, any party may file for opposition against the registration with TIPO within three months of the publication of registration.

The opposition procedure involves the opposing party filing a notice of opposition with TIPO identifying the basis for the opposition, and subsequently submitting a detailed rationale with evidence to support the opposition. The registrant will have the opportunity to file a counter-statement arguing why the registration should be maintained. The two parties can continue filing arguments and observations back and forth until both are content, and TIPO will issue a decision with grounds based on all the arguments and evidence presented by both parties.

In addition, a registered mark that is no longer in the three-month opposition period may be invalidated upon application by an interested party within five years of the date of registration. The grounds for opposition and invalidation are similar to those of registration refusal, among which prior trademark rights, well-known marks and bad-faith filing are the primary bases. Thus, if a brand owner has previously used its trademark on the same or related goods or services anywhere without obtaining registration or establishing reputation in Taiwan, it is still possible to file an opposition or initiate an invalidation action based on the bad faith of the applicant. Invalidation procedures are similar to those for opposition, but the petitioner who files an invalidation against a trademark registration based on the petitioner’s prior trademark rights shall furnish proof that, during the period of three years preceding the date of request for invalidation, the earlier trademark has been used in connection with the goods or services in respect of which it is registered and which he or she cites as justification for their request, or that there are proper reasons for non-use, provided the earlier trademark has at that date been registered for more than three years.

Once the opposed trademark’s registration is contested and confirmed by a disposition of the opposition, no invalidation can be filed against such opposed trademark based on the same facts, evidence and grounds as those in the opposition.

The official fees for filing the opposition or invalidation against one trademark in one class are US$140 and US$245, respectively. The attorney fee will be charged hourly for reviewing and organising the evidence, drafting and filing the opposition or invalidation brief and the subsequent procedures for reporting the adversary’s responses and filing supplemental briefs and reports, depending on the actual time consumed. Since the two parties can file arguments and observations back and forth in opposition or invalidation proceedings, the relevant costs for completing the proceedings are difficult to estimate, and would be around US$2,200 to US$4,800 (including the official fee) if there are no more than two rounds of arguments between the two parties.

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term of protection for a trademark is 10 years from the date of its registration, and the rights of a registered mark can last indefinitely if the renewal fees are paid timely. A renewal request must be made within six months prior to expiry of the 10-year term or within six months (grace period) following the expiry date. Proof of use is not required when filing to renew a registered mark.

What is the procedure for surrendering a trademark registration?

The owner of a registration may voluntarily surrender his or her registration by filing a request of withdrawal with TIPO. A scanned copy of power of attorney and the Request of Withdrawal Application are required documents.

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, as long as they fulfil the requirements of other IP rights. For example, the creativity and originality requirements under the copyright, or the creativity and novelty requirements for a design patent.

What regime governs the protection of trademarks online and domain names?

The Domain Name Dispute Resolution Policy may be applied for resolving the domain name dispute arising out of the trademark.