07-17-2012 (Newsletter Issue 11/12)
New Trademark Act Effective
Taiwan’s newly amended Trademark Act entered into force on July 1st 2012, a year after the promulgation date.
The new Trademark Act, among other things, enlarges the scope of protectable subject matter to allow all forms of sensory signs that are distinctive enough to identify goods or services from others to be registered as a trademark. Some forms of non-traditional symbols are exemplified in the trademark law, such as colours, three-dimensional shapes, motions, holograms and sound, but such examples are not exhaustive.
Under the recently published Examination Guidelines for Non-traditional Trademarks, a position mark that highlights a certain drawing, colour or three-dimensional symbol on a particular position of a product or location of a service provider may also be registered. Designs or decorations of a business location and product packaging are categorized as the same type of a three-dimensional shape, and will be examined under the same distinctiveness standard for trademarks. In addition, scent, taste and texture that bring a certain sensation to consumers are also taken into consideration under the Examination Guidelines.
Source: Tsai Lee & Chen, Taiwan
05-15-2012 (Newsletter Issue 8/12)Amended Trademark Act Soon EffectiveThe Taiwan Trademark Office announce that the amendment to the Trademark Act will be effective on July 1, 2012. The amendment was promulgated on June 29, 2011.
Key points of the amendment are:
- Scope of protectable trademarks is extended: Protection to more non-traditional marks, such as motion and hologram marks
- Modes of trademark use are specified: Online trademark use
- Accepting priority rights based on exhibition
- Installment payment for registration fee is abolished
- Reinstatement of registration is available after failure to pay registration fee in time
- A letter of consent is no longer guaranteed to prevent citation of conflicting prior rights
- Proof of use of a trademark will be required to support a cancellation action based on a prior trademark registration
- New provisions have been added to enhance protection against trademark infringement and to strengthen enforcement of border control measures
For further information on the amendments, please click here
Source: Lee and Li, Attorneys-at-Law, Taipei, Taiwan,
Baker & McKenzie Taipei, Taiwan
04-02-2011 (Newsletter Issue 6/11)
Early Renewal Application Rejected
The Taiwan Intellectual Property Office (TIPO) has stated that if a trademark renewal application is filed more than six months before the expiration of the registration term, the application will be rejected.
According to the relevant provisions of the Trademark Act, an application for renewal of the term of trademark rights should be filed within six months before the expiration of the term; but in practice, the TIPO has never strictly enforced this provision. However, to avoid disputes, any application filed on or after September 1st, 2010 that does not comply with the provision will not be accepted.
Source: Lee and Li Attorneys at Law, Taiwan
03-01-2011 (Newsletter Issue 4/11)Cross-Strait (Taiwan & China) IPR Agreement SignedSince November 22nd, 2010, the trademark authorities of China and Taiwan have accepted trademark applications claiming priority based on a corresponding application filed on the other side of the Taiwan strait.
For further information please click here
Source: AFD China Intellectual Property, Beijing, China
02-24-2011 (Newsletter Issue 3/11)Free Online DatabaseThe Taiwan Intellectual Property Office (TIPO) has made the online search database of similar trademarks available free of charge to the public effective of January 1st, 2011.
To access the the database (Chinese version) please click here
02-01-2011 (Newsletter Issue 2/11)Official Fees ChangedThe Taiwan Intellectual Property Office (TIPO) has changed its official fees for trademark applications effective from February 1st, 2011.
For more information on the amended fees please click here
Legal basis is the Trademark Act, last amendment on June 29, 2011 and effective on July 1, 2012.
Trademark protection is obtained by registration.
Taiwan follows the first-to-file system.
Nice classification, 10th edition
In addition, there are national subclasses.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks and any combination of the mentioned signs. The newly effective Trademark Act includes motion and hologram as examples of protectable objects as well as position, scent, tactile and taste.
The following trademark types are registrable: trademarks for both, goods and services, collective marks, and certification marks.
The application is filed at the Trademark Office.
Multiple-class applications are possible.
Foreign applicants who have no domicile or business office in Taiwan need a local agent.
A non-legalised and/or notarised power of attorney is sufficient.
Foreign applicants do not need a domestic company/domicile registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 10 to 12 months.
After registration, the trademark is published in the official gazette.
The opposition period is 3 months from publication date of the registration.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 3 years from registration, or has not been used later for a continuous period of at least 3 years without justifiable cause, the IP Office may, ex officio, or at the request of a third party, cancel the right to the exclusive use of the mark.
The official filing fee in the classes 1-34 is TWD 3,000 (approx. EUR 75.00) per class for up to 20 goods, plus TWD 200 (approx. EUR 5.00) per item over 20 items of designated goods.
The official filing fee in the classes 35-45 is TWD 3,000 (approx. EUR 75.00) per class; while retail services of specific good in class 35 are designating, plus TWD 500 (approx. EUR 13.00) per item over 5 items of designated retail services of specific goods.
The official filing fee for a collective mark or certification mark is TWD 5,000 (approx. EUR 126.00) per application.
When filing for trademark registration in electronic format, the filing fee shall be reduced by TWD 300 (approx. EUR 7.60) per application.
The official registration fees is TWD 2,500 (approx. EUR 63.00) per class; payment by instalments is no longer permissible under the newly effective Trademark Act.
The registration fee for a collective mark or certification mark is TWD 2,500 (approx. EUR 63.00) per application; payment by instalments is also abolished.
Trademark Licence Agreement
In Taiwan a licence agreement should be in writing but may be concluded orally. It is permitted to license the use of unregistered trademarks. A trademark may be licensed for some or all of the goods or services covered. Licences may be exclusive or non-exclusive. The sale of a registered trademark does not automatically terminate the licence.
Taiwan’s Trademark Law provides for the following:
1. If trademark rights were assigned subsequent to the recordal of a trademark licence, the assignee shall be bound by the licence agreement.
2. The exclusive licensee has the right to exclude the trademark holder and any third party from the use of the licensed trademark.
3. An exclusive licensee has the right to sub-license the trademark.
4. A trademark right holder may abandon his rights. A party which has recorded a licence or a pledge must obtain the consent from the licensee(s) or pledgee(s).
There are provisions in law for the recordal of a licensee. The recordal of a licence is voluntary, but it becomes effective against third parties only upon registration with the Registrar’s Office. The recordal must be effected before the expiration of the registered trademark. According to Taiwanese Trademark Law, the term of licensing must not exceed the trademark duration. If the trademark is renewed, the licence has to be recorded again to be effective. There are no statutory provisions prescribing the form and/or content of a licence agreement. If the licence is to be recorded, the licensee, the trademark registration number, the licence period, the licensed goods and/or service and/or the class(es) should be provided in the agreement. No further documents are required.
The licence agreement determines when the licence becomes effective. The licence becomes enforceable against third parties upon the date the approval of the licence recordal is published in the Trademark Gazette. An unrecorded licence is not required to be published.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the proprietor in infringement proceedings, unless the proprietor petitions the court for third party participation. The Trademark Law provides that an exclusive licensee has the right to institute infringement proceedings. A registered user may not call upon the trademark owner to institute infringement proceeding, except in instances where the licence agreement provides for this. The exclusive licensee has the right to institute proceedings for infringement in his own name. The licensee does not need to cite the proprietor as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
Baker & McKenzie, Taipei, Taiwan
AIPT, Zhonghe, Taiwan
Baker & McKenzie, Taipei, Taiwan
Baker & McKenzie, Taipei, Taiwan
Essen Patent & Trademark Office, Taipeh City, Taiwan