By Hung Ou Yang ＆ Paul Ma
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Trademark is a type of intellectual property that helps a business to distinguish its goods or services from others. The element of a trademark shall consist of a sign with distinctiveness, which may consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. Registering your trademark in Taiwan can establishing your brand identity of the goods or services provided, making it easier for consumers to recognize and remember them, and giving you the exclusive right to use the mark in connection with the goods or services listed in the register. This means that other people, in particular your competitors, cannot use the same or a similar mark without the owner's permission to compete with you. For the foreigners or foriegn companies who plan to expand its market in Taiwan, registering the trademarks definitely would be the first and most important step to start. See also Ten Most Frequently Asked Questions Regarding Trademark Registration in Taiwan.
Taiwan Trademark Registration in General
In Taiwan, the legal source of the trademark system is the Trademark Act, which provides the definition of trademark, the process for registering and protecting trademarks, the remedies available for trademark infringement and the punishment against violation of the right of trademark.
The official authority in charge of trademark affairs in Taiwan is the Taiwan Intellectual Property Office ("TIPO"). TIPO is responsible for examining and approving applications for trademark registration, maintaining the trademark register, and providing services in relation to trademarks, such as trademark renewal.
Steps of Trademark Registration
To register a trademark in Taiwan, you shall check the following steps to enhance your chances of sucess:
1. Conducting a prior search. Before the trademark registration, the applicant may conduct a prior search to ensure its mark is available for registration and to avoid any potential conflicts with existing trademarks. This step may be also helpful for the applicant to preclude the risk and tackle with the problems brought by trademark trolls.
2. Filing Application to TIPO. To initiate the application procedure, the applicant is required to submit forms with necessary information for TIPO to examine. Generally, the necessary information includes :
(a) title of the trademark,
(b) clear and legible sign of the trademark (which may be text or graphic),
(c) a list of the classes of goods/services for which the trademark will be registered, and
(d) name and address of the applicant.
3. Examination Process: TIPO will examine the application to determine whether it meets the requirements for registration. This process can take at least 6 to 7 months in a normal case. If the application is granted, the trademark will be published for registration. Also, the applicant will get a trademark certificate.
4. Paying the Registration Fee: The trademark registration is chargeable by TIPO. In general, the applicant shall pay the fees upfront when filing the application, which will be NTD 3,000 per trademark per class. Then, after the trademark is accepted, the applicant shall further pay registration fee, which amounts to NTD 2,500 per trademark per class.
5. Validity: Once the trademark is registered, it will be valid for 10 years from the date of publication for registration. The trademark can then be renewed every 10 years to maintain the protection.
Tips for Trademark Registration Process
We are providing tips for Taiwan trademark registration process as follows to help you understand more of the procedures. Of course, you can engage our firm to save your time and efforts. See also Ten Most Frequently Asked Questions Regarding Trademark Registration in Taiwan.
1. Conducting Prior search: Although conducting prior search is not a satutory procedure, it is still highly recommended to do so prior to the application. The prior search can be helpful to understand whether the trademark is registrable and to avoid any risk of causing confusion with currently registered trademarks.
2. Noticing the Number of Designated goods/services of each class: Keep in mind that the additional fees would be charged if the number of designated goods/services exceeds 20 in classes 1 to 34 or 5 in class 35.
3. Avoiding Descriptive Mark. A very common reason resulting in the rejection of the application is that the trademark is considered as a descriptive mark, lacking distinctiveness. Bearing in mind that your marks shall be a sign with distinctiveness to ensure the registrability.
By following the steps and noticing the tips stated in this article, the applicant can increase the chances of a successful trademark registration in Taiwan. However, foreigners or foreign companies, may prefer to seeking for advice and assistance from the local lawyers not only because of the mandatory requirement under Taiwan Trademark Act, but also because of the effectiveness and the accuracy in trademark registration provided by an experienced local lawyer. Brian Trust International Law Firm has extensive experiences in trademark registration and intellectual property protection. Our clients include diverse industries from all over the world, all of whom successfully registered their trademarks in Taiwan and started their businesses by establishing brand identities in this vigorous island. If your company has any questions or need any assistances with the process, Brain Trust International Law Firm must be your best choice.
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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