Trademark protection is obtained through registration in Taiwan and follows the first-to-file system in application. The following types of distinctive signs are registrable: trademarks (for both goods and services); collective marks; certification marks; and collective trademarks (for both goods and services).
In addition, according to the Examination Guidelines on Non-traditional Trademarks issued by the Taiwan Intellectual Property Office, smells, patterns and positions are also registrable as a trademark, while tactile and gustatory signs are only exceptionally registrable.
An application is filed at the Taiwan Intellectual Property Office. Multiple-class applications are possible and foreign applicants with no domicile or business office in Taiwan need a local agent to file the application. However, a legalised and/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, an examination of absolute grounds (e.g. distinctiveness), and an examination of relative grounds (e.g. likelihood of confusion). Signs without innate distinctiveness can be registered if distinctiveness has been acquired through use.
Opposing a trademark
The opposition period is three months extending from the publication date of the trademark registration.
Trademark registration is valid for 10 years from the publication date of the registration and is renewable for another decade.
Grace period for renewal
A trademark may be renewed within six months preceding the expiry date. The grace period for trademark renewal is six months from expiry date of the registration. After expiry of the grace period, the trademark registration will automatically lapse.
A lapsed mark cannot be restored. However, if the owner failed to comply with the grace period for renewal due to force majeure or any cause not attributable to the owner, an application for restoration may be filed within 30 days from the day after the cause vanishes.
However, no application for restoration may be made beyond one year after 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 publication date of the registration, or has not been used later for a continuous period of three years without a justifiable cause, the IP Office may ex officio, or at the request of a third party, cancel the registration.
The party alleging non-use of a trademark needs to provide prima facie evidence on petitioning for the cancellation of the trademark registration, while the trademark owner bears the burden of proving trademark use after the 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, as defined in the Trademark Act, means using a trademark for marketing purposes in any of the following situations to enable relevant consumers to recognise it as a source identifier:
- Applying for a trademark on goods or the packaging;
- Possessing, displaying, selling, exporting or importing the above-mentioned goods;
- Applying for a trademark on articles relating to services provided; and
- Applying for a 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. Use need not necessarily have been continuous, as sporadic, intermittent or one-off use will suffice.
But using a similar or related trademark will not necessarily suffice. Use of a mark in a form different from the form in which it is registered constitutes use of the trademark only if merely minor changes have been made without altering its distinctive parts.
Use of the mark in a different form does not constitute use if:
- A coloured trademark is changed to black-and-white;
- The colours of a coloured trademark are changed; or
- Only 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 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:
- If a trademark is assigned subsequent to the recordal of a trademark licence, the assignee shall be bound by the licence agreement;
- An exclusive licensee has the right to exclude the trademark owner and any third party from the use of the licensed trademark;
- An exclusive licensee has the right to sublicense the trademark; and
- A trademark owner may abandon their rights. However, if a licence or a pledge has been entered into the register, the trademark owner shall obtain the consent of the licensee or pledgee.
There are provisions in the Trademark Act for the recordal of a trademark licence. The recordal of a trademark licence is voluntary but becomes effective against third parties only after it is recorded at the IP Office. The recordal must be applied for 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 does not need to be recorded again. If the trademark registration is not renewed within the renewal deadline, the licence recordal will lapse with lapse of the registration. However, the licence agreement for the unregistered trademark will still be effective between the licensor and licensee.
There are no statutory provisions prescribing the form and/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:
- Name, address of domicile or business establishment, nationality or locality of the trademark owner and licensee and, if any, name of the representative;
- If any, name and address of domicile or business establishment of the agent;
- Registration number of the trademark;
- Whether the licence is exclusive or non-exclusive;
- Date when the licence took effect and, if any, will be terminated;
- Whether the licence is for part of the designated goods or services, the list of such goods or services and the classes; and
- Whether 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 on 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 use. 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 a 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 2585 6688 (Ext 8187)