Safeguarding trademarks poses real challenges as the virtual world collides with the real one, but opportunities abound for those who are quick to adapt
Trademark protection is obtained through registration. In addition, Taiwan follows the first-to-file system. The following types of marks are registrable: trademarks for both goods and services; collective marks; certification marks; collective trademarks for both goods and services; and all distinctive signs.
In addition, according to the IP Office of Taiwan’s Examination Guidelines on Non-traditional Trademarks, smells, patterns and positions are also registrable, although tactile and gustatory signs are only registrable as a trademark exceptionally.
Application is filed at the IP Office. Multiple-class applications are possible, and foreign applicants without domicile or business offices in Taiwan need a local agent. However, a legalised or notarised power of attorney is not required, and foreign applicants do not need a domestic company or domicile registration.
The application process includes a formal examination of absolute grounds (e.g. distinctiveness) and relative grounds (e.g. likelihood of confusion). Signs without innate distinctiveness can be registered if distinctiveness has been acquired through use.
OPPOSITION PERIOD AND DURATION
The opposition period is three months from publication date of trademark registration. Trademark registration is valid for 10 years from the registered publication date, and renewable for the following 10 years.
A trademark may be renewed within six months preceding the expiry date. The grace period for trademark renewal is six months from the registration expiry date, after which the trademark registration automatically lapses.
A lapsed mark cannot be restored. However, if the owner has failed to comply with the grace period for renewal due to an act of God or any cause not attributable to the owner, the trademark owner may apply for restoration within 30 days from the day following the date on which the cause vanishes.
No application for restoration may be made beyond one year after the failure to comply with the grace period for renewal. A lapsed trademark may be re-registered in the name of a third party at any time if the renewal application is not filed within the grace period.
If a trademark has not been used for three years from registration publication date, or not used later for a continuous period of three years without justifiable cause, the IP Office may ex officio or at the request of a third party cancel the trademark registration.
The party alleging non-use of a trademark needs to provide prima facie evidence upon petitioning for cancellation of the trademark registration. The trademark owner bears the burden of proving trademark use after cancellation proceeding is initiated. In addition, the party alleging non-use of a trademark is not required to prove a legitimate interest in the trademark cancellation.
Use is only required to be done in Taiwan. Trademark use, according to the Trademark Act, means use for marketing purposes in any of the following situations to enable relevant consumers to recognise it as a source-identifier:
- Applying trademark on goods or associated packaging;
- Possessing, displaying, selling, exporting or importing the above-mentioned goods;
- Applying trademark on articles relating to services provided; and
- Applying trademark on commercial documents or advertisements relating to goods or services.
- Use of a mark on digital video or audio, electronic media, the internet or other media also constitutes use of the trademark, with use not necessarily continuous. Sporadic, intermittent or one-off use suffices.
- Using a similar or related trademark does not necessarily suffice.
Use in a form different from that registered constitutes use of the trademark only if minor changes have been made, and the changes do not alter distinctive parts of the trademark.
Use of the mark in a different form does not constitute use if:
- A coloured trademark is changed to a black and white one;
- The colours of a coloured trademark are changed; or
- Only a part of a trademark has been used.
In Taiwan, a licence agreement may be concluded in writing or orally. It is permitted to license an unregistered trademark. A registered trademark may be licensed for all or part of the designated goods or services.
A licence may be exclusive or non-exclusive. If a registered trademark is assigned after the licence has been entered into the register, the assignee is still bound by the licence agreement. The sale of a registered trademark does not automatically terminate the licence if the licence of the registered trademark is entered in the register.
The Trademark Act provides for the following:
(1) If a trademark is assigned subsequent to the recordal of a trademark licence, the assignee shall be bound by the licence agreement.
(2) An exclusive licensee has the right to exclude the trademark owner and any third party from using the licensed trademark.
(3) An exclusive licensee has the right to sublicense the trademark.
(4) A trademark owner may abandon his rights. However, if a licence or a pledge has been entered in the register, the trademark owner shall obtain the consent of the licensee or the pledgee.
There are provisions in the Trademark Act for the recordal of a trademark licence. The recordal of a trademark licence is voluntary, but it becomes effective against third parties only after it is recorded at the IP Office. The recordal must be applied before the expiration of the trademark registration. The licence period may exceed the registration period.
In this case, if the trademark registration is renewed within the renewal deadline, the licence need not be recorded again – and if the trademark registration is not renewed within the renewal deadline, the licence recordal will lapse with the lapse of the registration. However, the licence agreement for the unregistered trademark will still be effective between the licensor and the licensee.
There are no statutory provisions prescribing the form or content of a licence agreement. A request to record a trademark licence in the register shall be made by the trademark owner or the licensee by filing a written request specifying the following:
(1) Name, address of domicile or business establishment, nationality or locality of the trademark owner and licensee, and, if any, name of the representative;
(2) Name and address of domicile or business establishment of the agent, if any;
(3) Registration number of the trademark;
(4) Whether the licence is exclusive or non-exclusive;
(5) Date when the licence took effect and, if any, will be terminated;
(6) Where the licence is for part of the designated goods or services, the list of such goods or services and the classes; and
(7) Where the licence is for a particular locality, the name of that locality.
The licence agreement determines when the licence becomes effective. The licence becomes enforceable against third parties upon the date when the licence recordal is published in the official gazette. An unrecorded licence is not required to be published.
There is an evidentiary presumption that the trademark use of a recorded licensee is legal. A non-exclusive licensee may not join the trademark owner’s infringement proceedings unless the trademark owner petitions the court for third-party participation.
The Trademark Act provides that an exclusive licensee has the right to initiate infringement proceedings in its own name, unless the licence agreement provides otherwise. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings.
DEEP & FAR ATTORNEYS-AT-LAW
13/F, 27 Sec. 3, Chung San N. Rd.
Taipei 104, Taiwan
Tel: +886 2 25856688 Ext. 8187