This article provides a brief introduction to legal rights related to unregistered trademarks in Taiwan. For brand owners accustomed to jurisdictions where rights are primarily acquired through use, navigating Taiwan’s legal framework requires careful strategic planning. By examining the legal status of unregistered marks, this article highlights key procedural limitations and defensive considerations for businesses operating in Taiwan without formal trademark registration. 

Registered Trademarks vs. Unregistered Marks: Taiwan’s Civil Law Approach

In common law jurisdictions, the concept of “common law trademarks” is well established. In the United States, for instance, trademark rights can be secured through registration with the United States Patent and Trademark Office (USPTO), through state-level registration, or simply by establishing rights through actual use in commerce.

Taiwan, however, operates under a civil law system that prioritizes statutory registration and administrative certainty. Consequently, common law trademark rights—as understood in the UK or the US—do not exist in Taiwan. Instead, the legal framework distinguishes between “registered trademarks” and “unregistered marks”.

The Defensive Nature of Unregistered Marks under Taiwanese Law 

Taiwan adheres to the “registration-based protection” and “first-to-file” principles, which primarily grant protection to the party that first applies for trademark registration. Consequently, under Taiwan’s Trademark Act, owners of unregistered marks are, in principle, limited to the following defensive rights:

(1) Protection of Well-Known Trademarks or Prohibition Against Bad-Faith Imitation

Without trademark registrations in Taiwan, a prior user (i.e. owner of an unregistered mark) may face procedural complexities with trademark squatters who may preemptively register the mark. While the Trademark Act allows a prior user to initiate opposition or invalidation proceedings against other’s registrations, the evidentiary threshold remains a critical consideration. To successfully challenge a registration, a prior user typically must establish that:

• The unregistered mark has attained well-known status among relevant consumers or businesses within the Taiwan market; or
• The applicant acted in bad faith, possessing prior knowledge of the mark through specific contractual, geographical, or business relationships.

In practice, meeting these statutory requirements requires substantial evidence.

(2) Room for Good-Faith Prior Use

In a first-to-file jurisdiction like Taiwan, the trademark landscape emphasizes early registration. For businesses that may not have prioritized filing or have been unsuccessful in opposition or invalidation proceedings, the legal position requires a nuanced defensive strategy. In such cases, the “prior use in good faith” defense serves as a critical consideration.

Under Article 36 of the Trademark Act, the exclusivity of a registered trademark is not absolute. If a party has been using an identical or similar mark in good faith prior to the registrant’s filing date, they may be protected against certain infringement claims by a registered trademark owner.

While this provision offers a “right to continue” existing operations, it functions as a defense against infringement claims by others. It facilitates a state of legal coexistence, provided the user remains within the original scope of their historical use. In the context of brand management, understanding this defensive mechanism is essential for maintaining business continuity and navigating potential rebranding requirements.

 – Limitation to Original Scope

The Trademark Act stipulates that the scope of good-faith prior use not subject to restriction by the registered trademark owner is limited to the “original scope of use.” However, the so-called original scope of use encompasses various factors, including the original goods or services, geographical area, scale of production and sales, and marketing channels. The specific scope is determined by the court on a case-by-case basis in infringement proceedings. Therefore, for an unregistered trademark owner, even with the status of good-faith prior use, due to the uncertain concept of original scope of use, it is difficult to completely eliminate the risk of infringement in the dynamic process of business development.

– Requirement of Distinguishing Marks

If the continued use by the good-faith prior user is likely to cause consumer confusion, the registered trademark owner has the right to demand that the prior user add clear identifiers (e.g., company name) to differentiate the two brands.

Enforcement Challenges for Owners of Unregistered Marks in Taiwan

Although unregistered marks cannot exclude another party’s use under the Trademark Act, Taiwan’s Fair Trade Act provides unregistered trademark owners the ability to prevent others from using marks in a manner likely to cause confusion among relevant consumers, based on the status of “well-known trade dress.” However, brand owners should be mindful of the following enforcement parameters:

(1) The Localized Fame Requirement and High Evidentiary Burden:

Under the territoriality principle, fame established abroad does not automatically confer protection in Taiwan. The owner must prove the mark/trade dress is well-known specifically among relevant businesses or consumers within Taiwan. Substantial objective evidence of local use, such as Taiwan-specific promotional materials and advertising expenditures, is required.

(2) Absence of Criminal Remedies:

Criminal penalties for trademark infringement are exclusively reserved for registered trademarks. Unregistered trademark/trade dress owners cannot pursue criminal charges against infringers, removing a major deterrent and a significant point of leverage in settlement negotiations.

Risk Mitigation Strategies for Brand Owners 

To mitigate the risks of operating without registration, it is advisable that the owners of unregistered marks adopt the following strategies: 

(1) Secure Formal Registration:

Since the full spectrum of legal protection applies primarily to registered marks, securing a Taiwan registration is the single most effective step. Notably, Taiwan does not require evidence of prior use to file an application.

(2) Maintain a Reputation Dossier:

It is advisable to systematically collect localized evidence (e.g., media mentions, marketing collateral, local consumer discussions). Such evidence is indispensable when attempting to enforce rights based on an unregistered trademark.

(3) Active Monitoring and Administrative Challenges:

As unregistered trademarks are vulnerable to bad-faith squatting, owners are recommended to regularly monitor trademark gazettes to file oppositions or invalidations against preemptive registrations.

(4) Leverage Alternative IP:

Graphically designed logos or patterns within a trademark may be protected under the Copyright Act, which provides protection without registration. Furthermore, unique product configurations can be protected through Design Patents.

In summary, while Taiwan’s legal framework offers certain defensive mechanisms for unregistered marks—such as protection against bad-faith registrations and the good-faith prior use defense—these remedies remain inherently passive and limited in scope. Unregistered trademark owners face significant evidentiary burdens and restricted enforcement options. For brand owners operating in or entering the Taiwan market, securing local trademark registration is highly recommended, as it transforms a defensive posture into proactive rights protection, providing the most comprehensive and predictable legal safeguards against infringement, counterfeiting, and trademark squatting.

This article is written by Gary Kuo, Yi-Kai Chen, and Yo-Zhen Lin.

If you would like to learn more about laws and regulations and other matters related to this article, please feel free to contact us at gkuo@winklerpartners.com and ychen@winklerpartners.com.