A detailed analysis of Taiwan’s intellectual property regime
What is registrable as a trademark? Trademark protection is obtained through registration and Taiwan follows the first-to-file system. The following types of marks are registrable: Trademarks (for both goods and services); collective marks; certification marks; and collective trademarks (for both goods and services). All distinctive signs are registrable as trademarks. In addition, according to the Examination Guidelines on Non-traditional Trademarks, smells, patterns and positions are also registrable as trademarks, and tactile and gustatory signs are only registrable as a trademark exceptionally.
The application is filed at the Intellectual Property Office. Multiple-class applications are possible. If foreign applicants have no domicile or business office in Taiwan, they need a local agent.
However, a legalized and/or notarized power of attorney is not required and foreign applicants do not need a domestic company/domicile registration. The application process includes formal examination, examination of absolute grounds (e.g. distinctiveness) and examination of relative grounds (e.g. likelihood of confusion). Signs without an innate distinctiveness can be registered if it has been acquired through use.
Opposition against a national trademark. The opposition period is three months from the publication date of a trademark registration.
Duration. A trademark registration is valid for 10 years from the publication date of the registration. A trademark registration is renewable for periods of 10 years.
Grace period for trademark renewal. A trademark may be renewed during six months preceding the expiry date. The grace period for trademark renewal is six months from the expiry date of the registration. After the 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 an act of God, or any cause not attributable to the owner, he/she may apply for restoration within 30 days from the day following the date on which the cause vanishes. However, 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 the 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 trademark 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 for the cancellation of the trademark.
Use is only required to be done in Taiwan. Trademark use, as referred to in the Trademark Act, means the use of a trademark for marketing purposes in any of the following situations to enable the relevant consumers to recognize it as a source identifier:
- Applying a trademark on goods or packaging;
- Possessing, displaying, selling, exporting or importing the goods;
- Applying a trademark on articles relating to services provided; and
- Applying 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 may not necessarily have been continuous. Sporadic, intermittent or one-off use will suffice. To use 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 minor changes have been made, and the changes do not alter the distinctive parts of the trademark.
Use of the mark in a different form does not constitute use in the event that: 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.
Trademark licence agreement
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/services. A licence may be exclusive or non-exclusive. If a registered trademark is assigned after the licence has been entered in 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 sub-license the trademark; and
- 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 for before the expiration of the trademark registration and 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 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:
- The name, address of domicile or business establishment, nationality or locality of the trademark owner and the licensee, and, if any, name of the representative;
- If any, the name and address of domicile or business establishment of the agent;
- The registration number of the trademark;
- Whether the licence is exclusive or non-exclusive;
- The date when the licence took effect and, if any, will be terminated;
- Where the licence is for part of the designated goods or services, the list of such goods or services and the classes thereof; and
- Where the licence is for a particular locality, the name of that locality.
The licence agreement determines when the licence becomes effective, and 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 a 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 co-defendant in any such proceedings.