1. Do I acquire trademark rights in Taiwan through use or registration?

Taiwan employs a first-to-register system for trademark protection. Your unregistered marks may receive some limited protection under other laws, notably the Fair Trade Act. However, trademark registration is the preferred means of protection.

2. Who may register a trademark in Taiwan?

Any individual, corporation or legal entity may apply to the Taiwan Intellectual Property Office (TIPO) to register a trademark in Taiwan. Foreign applicants may apply to register a mark in Taiwan if the foreign applicant is from a WTO member country or a jurisdiction that protects trademarks on a reciprocal basis with Taiwan. Those not domiciled or established in Taiwan must appoint a trademark agent in Taiwan to register a mark.

3. What are the benefits of registration?

Registration of a mark confers significant legal benefits. Registration provides the trademark owner with the exclusive right to use the mark in connection with the designated goods and services. It also enables the registrant to preclude others from using the same or a confusingly similar mark in connection with the same or similar goods or services. Infringement of a registered trademark in Taiwan gives rise to both civil and criminal liability, and may be used as a basis for border enforcement, police raids or other preliminary injunctions or attachments. Early registration of a mark is important because Taiwan’s Trademark Act follows a first-to-file system.

4. What classification system does Taiwan use?

Taiwan allows for multi-class applications and requires specific designations of goods and services based largely on the international “Nice Classification” system. As in Japan, Taiwan’s classification system includes subclasses and there is a strong presumption that goods and services in the same subclass are similar. The TIPO has published guidelines identifying which goods and services it presumes to be similar.

5. Is Taiwan a signatory to any international trademark treaties?

Taiwan is not a party to the Paris Convention, the Madrid Protocol or other international trademark treaties. Taiwan is, however, a member of the World Trade Organization (WTO), and priority may be claimed based on an application first filed in any WTO member state.

6. What types of marks may be registered?

Any word, device, symbol, color, sound, three-dimensional shape, or combination thereof may be registered as a trademark.

The Trademark Act prohibits marks from being registered if the mark is: non-distinctive, descriptive, misleading, against public morals, similar to the flags of any nation, national emblems, or symbols of famous international organizations. If an applicant is able to provide evidence of use sufficient to establish that the relevant consumers identify the mark as an indication of source, then an objection on the grounds that the mark is non-distinctive or descriptive may be overcome and the mark may be registered.

7. Am I required to use my mark in Taiwan before registration?

No. You do not need to use your mark in Taiwan before registration. However, if after registration you stop using your mark without a valid reason for a continuous period of more than three years the registration may be revoked. “Use” generally means use in Taiwan and use in advertising, digital media etc., constitutes use of a trademark provided it conforms with the normal business practices in the industry.

8. How long is a registration effective? Can a registration be renewed?

The Trademark Act provides for a ten-year term of protection, which is renewable indefinitely for additional ten-year terms. A renewal application should be filed within the six-month period before the expiration date. The TIPO accepts late renewal applications for six-months after expiration, but doubles its renewal fees. You do not need to submit evidence of use to renew, and renewals are not subject to substantive examination by the TIPO.

9. How long does it take to register a mark?

The TIPO typically approves a routine trademark application within eight to ten months from the filing date; however, the TIPO may prolong the registration process by issuing office actions. Once approved, the applicant must pay the registration fee, whereupon the registration will be published in the Trademark Gazette for a three-month opposition period. If an opposition is filed and ultimately succeeds, the registration of the mark will be voided.

10. What documentation is required to file a trademark application in Taiwan?

1. Power of Attorney authorizing the trademark agent to file the application.
2. Five copies of the trademark specimen (between 5cm x 5cm and 8cm x 8cm).
3. The full name and address of the applicant.
4. The list of designated goods and services.

11. Does the Taiwan Intellectual Property Office substantively examine applications?

Yes, the TIPO substantively reviews each trademark application, examining the inherent registrability of the mark (distinctiveness, descriptiveness, etc.) as well as checking for potential conflicts with senior registered marks or senior applications. If a mark meets the conditions for registration, the TIPO will notify the applicant that the mark has been approved.

During its substantive examination, the TIPO may take issue with the application. For example, the TIPO might question the descriptiveness of the mark or think it is confusingly similar to a senior mark. If it does, the TIPO will issue an office action to the applicant. The applicant will have an opportunity to respond to the office action prior to the TIPO issuing a decision to register or reject the application. If the TIPO rejects the application, the applicant may file an administrative appeal with the Ministry of Economic Affairs. Subsequent appeals are administrative suits heard by the IP Court and Supreme Administrative Court.

12. Are famous marks afforded special protection?

Yes, Taiwan’s Trademark Act expressly protects famous trademarks. A famous mark may block the registration of a similar mark in Taiwan even if the famous mark is not registered in Taiwan where the pending mark is either confusingly similar to the famous mark or dilutes the distinctiveness of the famous mark or its reputation. These are also grounds on which a registered mark may be opposed. The Trademark Act also expressly provides that dilution of a famous registered mark is a form of trademark infringement giving rise to civil liability. Whether or not a mark is famous is determined on a case-by-case basis. There is no separate registry of famous marks in Taiwan.

13. What remedies are available for infringement?

Trademark infringement gives rise to civil and criminal liability in Taiwan. Criminal proceedings are the most common and often the most effective remedy as the police and prosecutors have authority to obtain or compel the defendant to produce evidence that cannot be discovered through a civil proceeding. Taiwan’s Trademark Act provides that trademark infringement may be punished by imprisonment of up to three years and criminal fines of up to NTD 200,000 (c. USD 6,500). Civil suits for trademark infringement may be brought as an independent civil claim or as an ancillary claim to a criminal proceeding. Civil damages are based on:

• actual damages suffered by the trademark owner;
• the benefit to the defendant arising from the infringement of trademark rights; or
• 500 to 1,500 times the unit retail price of the infringing goods.

Taiwan has a specialized Intellectual Property Court, which acts as the court of first instance for civil infringement claims, as well as the court of review for criminal claims and administrative suits. Local district courts are the courts of first instance for criminal infringement claims.

14. Is border enforcement available?

Yes, border enforcement measures are available. Trademark registrants may record their marks with customs, and customs will inspect imported and exported goods for these marks. In order for customs to hold or seize suspected infringing products, the trademark registrant or its agent must be able to confirm whether the potentially infringing products are genuine or counterfeit within 24 hours of notification. Border enforcement is a key component of a successful campaign to protect trademark rights in Taiwan but requires planning and resources to be used effectively.

15. Should I register a Chinese language version of my mark as well?

It depends. Taiwanese consumers are familiar with many foreign brands. As a result, many brand owners do not find it necessary to market their goods or services in Taiwan under a Chinese language mark.

The situation is very different elsewhere in the region, especially in China. If you are using a Chinese language mark anywhere in the region, we do recommend that you clear and register the Chinese language mark in Taiwan.

If you have any questions regarding trademarks in Taiwan or would like any more information, please feel free to contact us at pdernbach@winklerpartners.com.