table of contents
About trademark registration in Taiwan
Trademark application procedures in Taiwan generally proceed in the following order: application, formal examination, substantive examination, decision to register, and public notice.
The term of validity is 10 years from the date of public notice of registration, and it can be renewed any number of times every 10 years. Taiwan is not a party to the Paris Convention or the Madrid Agreement, so you will need to file your trademark application directly in Taiwan. On the other hand, since Japan is a member of the WTO, it is possible to claim priority based on a Japanese application.
<Average review period>
A decision of registration or a decision of refusal will be made approximately 8 months after the application is filed.
1. application
(1) Documents required for application
①Application form
②Trademark sample
③ Power of attorney
④Priority certificate (only when applying for priority claim)
(2) Target of protection
If it meets the definitions below, it will be protected as a trademark.
"A sign that has some kind of distinctiveness and is composed of letters, figures, symbols, colors, three-dimensional shapes, dynamics, holograms, sounds, etc., or a combination thereof."
(3) Language of application
The application language is Chinese (traditional or simplified).
(4) Handling of characters within trademarks
Even if the characters are in a foreign language, they will not be considered distinctive if their connotation is a common name for the designated goods or services or a related description.
If the applied trademark design consists of or includes foreign language characters, the applicant must indicate the type of language and its Chinese meaning in the trademark design analysis section of the application. .
2. Formality examination
We will mainly check the format of documents, application fees, etc. If there are no formal deficiencies, the date on which the application was submitted will be recognized as the application date.
3. substantive examination
The trademark will be examined to see if it falls under the category of a trademark that cannot be registered, including whether it is distinctive, whether it is identical or similar to a previously registered trademark, whether there is a misperception of quality, and whether there is a violation of public order and morals. If you do not meet these registration requirements, you will be notified of the reasons for refusal and given an opportunity to submit a written opinion.
Note that amendments such as reduction of designated goods and services and division of the application can be made until a decision of refusal is made.
An electrical outlet system (*) has also been adopted.
*) A system that allows registration of an applied trademark even if it is judged that registration is not allowed because it is similar to an earlier registered trademark, if the trademark right holder of the earlier registered trademark agrees.
4. Registration assessment - public notice
By paying the registration fee within two months from the day after the notification of registration is delivered, the trademark will be registered and publicized, and a trademark registration certificate will be issued. Even if you are unable to pay within 2 months, you can be relieved by paying double the registration fee within 2 months, unless the non-payment is intentional.
5. Dissatisfaction with decision of refusal
If you are dissatisfied with the decision of refusal, you can file a petition with the Ministry of Economic Affairs' Appeal Deliberation Committee. If you wish to further refute the decision regarding the appeal against the decision of refusal (dismissal of the application), you can file an administrative lawsuit or file an appeal to the Supreme Administrative Court (final hearing).
6. Objection
Anyone can file an objection within three months from the date of public notice of registration. Once a decision on objection is made, only the designated goods and services for which it is recognized that grounds for objection exist will be cancelled.
7. Invalidation trial
Interested parties or examiners can request a trademark invalidation trial. Reasons for invalidation include, for example, "violation of Article 29, Paragraph 1 (distinctiveness), Article 30, Paragraph 1 (general registration requirements), or Article 63 of the Trademark Law regarding trademark registration." Regarding the period for filing a request for invalidation trial, in principle, it is possible at any time after the trademark right has been established and registered. However, there is a period of exclusion for some grounds for invalidation, and a request for appeal based on these grounds for invalidation must be filed within five years from the date of public notice of trademark registration (if not filed in bad faith). (If so, the exclusion period may not apply).
8. Cancellation of non-use
If there is a reason for canceling a registered trademark, any person may apply for a cancellation trial to the Taiwan Intellectual Property Office at any time, and the Taiwan Intellectual Property Office may also cancel the registration ex officio. The most common reason for cancellation is that the product has not been used or has not been used continuously for three years without a valid reason after registration.
In order to prevent so-called "last-minute use," in which a trademark right owner starts using the trademark after knowing that another person is planning to request a non-use revocation trial, it is necessary to use the trademark right before a non-use revocation trial is filed. It is said that use of a trademark for three months is not permitted as trademark use.
9. Other trademark cancellation systems (other judgments)
If there are grounds for canceling a registered trademark (Article 63, Paragraph 1 of the Trademark Law), any person may apply for a cancellation trial to the Taiwan Wisdom and Property Office at any time, and the Taiwan Wisdom and Property Office may also cancel the registration ex officio. I can. The main reasons for cancellation are as follows.
(a) The trademark owner has changed or added notes to the trademark, and the trademark is the same or similar to the trademark that is the subject of cancellation at the time of the request for cancellation (i.e., the disputed trademark), or is used by another person. When the trademark is the same as or similar to a registered trademark that designates services (i.e., the underlying trademark), and there is a risk of confusion and misunderstanding among related consumers.
(b) When an appropriate distinction is not made based on the provisions of Article 43 of the Trademark Law.
(c) When the trademark is the common name of the designated goods or services.
(d) When the actual use of a trademark is likely to cause confusion or misunderstanding among the public regarding the nature, quality, or origin of the goods or services.