By Hung Ou Yang
When you would like to enter the Taiwan market for your products or services, you know that you have to think about how to promote your brands with the protections given by the Taiwanese trademark laws. You definitely will start from trademark registration. Now, we have prepared ten most frequently asked questions regarding trademark registration in Taiwan for your reference.
Q 1. Who Can Register a Trademark in Taiwan?
Any Taiwanese or foreign individual, corporation, or legal entity may apply for trademark registration in Taiwan. However, since Taiwanese laws provide that a branch office cannot enjoy any rights and obligations, a foreign corporation's branch office based in Taiwan cannot apply for trademark registration by its own name. Here, the applicant must be the headquarter.
Moreover, when two persons or more would like to jointly own a trademark, they may apply for trademark registration together and designate one of the applicants as the representative for the purpose of document delivery.
Q 2. Do You Have to Apply for Trademark Registration in Taiwan for Obtaining Trademark Rights?
Generally speaking, the answer is YES. The Taiwanese Trademark Act uses the so called first-to-file system so that merely using a trademark on products or services cannot give you any exclusive trademark rights in Taiwan.
However, if your trademark is a famous one but not registered in Taiwan, the Taiwanese Trademark Act will still give it some protections, such as rejecting a trademark troll's application with your famous brands. Having said so, you do not know whether the Taiwanese authority will agree that your trademark is famous. The best solution is to apply for trademark registration first, not just marketing your brands in Taiwan or in other countries.
Q 3. Why Do You Have to Apply for Trademark Registration in Taiwan As Soon As Possible?
The reason is simple, first come, first served, and first protected. The Taiwanese Intellectual Property Office ("TIPO") would examine an application and grant the exclusive trademark rights based on chronological order. That being said, when you have your trademark registered in Taiwan, you get ahead of the game in terms of marketing.
TIPO may not approve any subsequent application for trademarks same or similar to yours to be used on the same or similar products/services if there is a risk that the consumers will be confused. See Section 1(10) of Article 30 of Taiwanese Trademark Act. The Taiwanese Intellectual Property Court also held that the later trademark application may be rejected for the reasons above even though the newly applied trademark is much more well-known than the previously registered one. See 107 Intellectual Property Court Xingshangsu No. 91 (2018). Therefore, the sooner the application, the better.
Q 4. What If You Are Using Your Brand But It Has Been Registered in Taiwan by Someone Else First?
You have to file an opposition with the TIPO within three months following the registration is announced. See Article 48 of the Taiwanese Trademark Act. Or, you have to file an invalidation within five years following the registration is announced (but you will not be bound by the five years limit if such registration is filed in bad faith. You may call it trademark troll exception). The problem is that in either way it takes lots of time and efforts to get the registered trademark revoked. Thus, it would be better off to register your brand as a trademark as soon as possible for the purpose of obtaining protections if you think the Taiwanese market is important to you at this moment or in the near future.
Q 5. Do Foreigners or Foreign Corporations Have to Hire Trademark Agents or Lawyers for Trademark Registration in Taiwan?
The answer is YES if you have no domicile or business office in Taiwan. When Taiwanese citizens may apply for trademark registration all by themselves and are not required to hire trademark agents or lawyers for such application, foreigners or foreign corporations probably cannot enjoy such benefits. In short, the Taiwanese Trademark Act provides that anyone who has no domicile or business office in Taiwan must hire a trademark agent for the trademark application process. To clarify, a Taiwanese lawyer undoubtedly qualifies to be the trademark agent required by the Taiwanese Trademark Act, and can conduct trademark litigation where trademark agents cannot do.
Q 6. Do Foreigners or Foreign Corporations Have to Notarize A Power of Attorney for Trademark Registration Process?
No, the TIPO does not require foreigners or foreign corporations to notarize a power of attorney. This simplifies the trademark registration process. However, if there is a lawsuit with regard to trademark dispute, the courts may order that a power of attorney shall be notarized for lawyers representing their clients.
Q 7. May You Register Your Trademark in Multiple Classes to Enhance Trademark Protection?
Yes, you may register your trademark in multiple classes on the basis of Nice Classification system so that you can enhance your trademark protection. In total, there are 45 classes for Taiwanese trademark registration which is consistent with the international standard. As to trademark class 1 to class 34 regarding goods, you may choose at most 20 classes for your trademark registration without being charged additional process fees by the TIPO. As to trademark class 35 to class 45, there will be no limitation except for class 35 where only 5 classes can be chosen without being charged additional process fees by the TIPO.
In general, our experiences show that you will get your trademark registration done easier when you choose less than 20 classes. For more classes you choose, there will be a higher possibility that a similar trademark previously registered gets you some trouble and costs you unnecessary time plus money to complete your trademark registration.
Q 8. How Much Time Does It Take to Complete Trademark Registration?
The TIPO claims that it takes around six to seven months to finish examining a trademark registration case if an applicant is not required to submit supplements and responses. In reality, however, it at least takes eight to ten months in average to get everything done after filing the application if there is no delay in any respect.
Q 9. What Is The Standard Used by The TIPO to Approve Or Disapprove Your Trademark Application?
A trademark may consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof, however, it must be a sign with distinctiveness. See Article 18 of the Taiwanese Trademark Act. Thus, the key standard used by the TIPO is whether your trademark is distinctive. The distinctiveness of a trademark refers to how it denotes the source of goods or services and distinguishes such goods or services from those of others. Id. Too abstract, right? Fortunately, the TIPO issued an examination guidelines in English for your reference. Too complicated and too long to look it over, right? Let's get you some easy examples.
1. You cannot register "Superb", "Highest Grade", "Exceptionally Good", "Quality Goods", "Original", "Fresh", "deluxe", "best", "top", "extra", "fresh", or "light" as your trademarks because they are descriptive, often used by businesses to signify the excellent quality of goods or services.
2. You cannot register "Arabica" which is a variety of coffee tree for your coffee products because it is a generic name, not distinctive.
3. You cannot register "Parfum" for your perfume products because "Parfum" means perfume in French, making it a generic name. Such foreign words used as generic name may sometimes luckily pass the examination merely because the examiners do not understand foreign languages. However, it will definitely be subject to the high risks of opposition and invalidation.
4. You cannot register a country's name (such as "Italy") or a city's name (such as "New York") as your trademarks because they merely indicate a geographic location. However, "PARIS BOYS" for clothes can be registered. The TIPO explains that "PARIS BOYS" implies fashion or fashion-conscious men so it is distinctive. Although "Paris" is a city famous for its fashion industry, "PARIS BOYS" appears to mean something more.
5. You cannot register someone's surname, including yours, as your trademark because usually it cannot serve as a sign identifying the source of goods or services. For example, in 2013, the TIPO rejected trademark application regarding "MISS WU" filed by Jason Wu, a leading fashion designer, with the reason that it represents a surname. Of course, this case is somewhat arguable because "MISS WU" is a famous mark to a certain extent. Although you cannot register your surname as a trademark, you may register your name as long as the name to be registered is not the well-known name, stage name, pseudonym, or alternative name of another person. So, names are distinctive.
Q 10. How Much Do You Have to Pay for The Trademark Application Process in Taiwan?
Of course, this is a question everyone would like to know in the end. We will be happy to give you a quote based on our assessment of the trademarks that you want to register. So, do not hesitate to contact us for initial assessment. In addition, our quote usually would cover (a) the fees for filing an application for registration, and (b) the fees for Trademark Registration Certificate after obtaining approval, charged by the TIPO. We believe this method will let you make the final decision easier, and get ahead of the game for marketing sooner.
AUTHOR: Hung Ou Yang
Managing Partner
Taipei
+886-2-2707-9976
[email protected]
Copyright Brain Trust International Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
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