Trademark Law

Chapter Four Trademark Rights ¡@¡@Article 027 ~ Article 039

Article 27 Duration and renewal of trademark registration

A trademark proprietor shall be granted trademark rights for a term of ten years from the date of registration announcement.
The durational term of a trademark registration may be renewed for a period of ten years at a time.


Article 28 Application for renewal

Application for renewal of the durational term of a trademark registration shall be filed within six months anterior or posterior to the expiration of the term. Renewal applied for within six months posterior to the expiration of the term shall be subject to payment of double registration fee.

The renewed durational term of a trademark registration granted under the preceding paragraph shall be calculated from the day following the date of expiration of the original term.


Article 29 Rights afforded by trademark registration

A trademark proprietor shall be afforded trademark rights in relation to the goods or services designated by its registration.

Unless otherwise provided in Article 30 of this Law, the following acts shall be subject to consent of the trademark proprietor:

1. use of any mark identical with its registered mark in relation to the same goods or services;

2. use of any mark identical with its registered mark in relation to related goods or services thus likely to cause confusion to the related consumers; and

3. use of any mark similar to its registered mark in relation to the same or related goods or services thus likely to cause confusion to the related consumers.


Article 30 Limitation on trademark rights: bona fide use; exhaustion of rights

The following circumstances shall not be restricted by a third-party trademark rights:
1. where anyone has used, in good faith or in a reasonable manner, an indication of its own name or trade name, the name, shape, quality, function, or place of origin of goods or services, or notes which are otherwise explanatory of the goods or services, provided that the use does not amount to trademark use;

2. where anyone has applied to goods or the packaging thereof a three-dimensional shape that is purely functional; and

3. where, prior to the filing date of the third-party trademark registration, anyone had used in good faith identical or similar trademarks on the same or related goods or services. This provision however shall be applicable to such goods or services only. The trademark proprietor may request such third party to affix appropriate indications to distinguish its goods.

A trademark proprietor is not entitled to claim trademark rights against use of its registered trademark on goods which have been put on the market under the trademark by the trademark proprietor or by any person with its consent or which have been auctioned or disposed by the competent authority as prescribed by the applicable law. This provision, however, shall not apply when the claim is made with intent to prevent deterioration of or damages to such goods, or for other justifiable causes.


Article 31 Division

A trademark proprietor may file application with the Trademark Office for approval to divide its trademark rights according to the designated goods or services.
The application to divide trademark rights as referred to in the preceding paragraph may be filed before finalization of opposition or invalidation proceedings thereagainst.


Article 32 Amendments after registration

Where there is any change in the particulars of a registered trademark, application for amendment shall be filed with the Trademark Office for approval; the amendment shall otherwise have no locus standi against any third party.
The trademark itself and the designated goods or services shall not be amended after registration. This provision shall, however, not apply to the restriction of the designated goods or services.

The provisions of the third paragraph of Article 20 and the second paragraph of the preceding Article shall apply, mutatis mutandis, to amendment of registration particulars.


Article 33 Recordation of license; marking requirements for licensee

A trademark proprietor may grant another a license to use its registered trademark on all or part of goods or services designated by its registration.
Application shall be made to record the license referred to in the preceding paragraph with the Trademark Office. Unrecorded license shall have no locus standi against any third party. The same provision shall apply as well when, subject to approval by the trademark proprietor, the licensee of the trademark grants a sub-license to a third party to use the registered trademark.

In the event of transfer of the licensed mark after recordation of a license, the licensing agreement on file shall in turn be binding upon the assignee.

A trademark licensee/sublicensee shall affix licensing marking to the goods, the packaging or containers therefor, or articles and documentation associated with the licensing in a salient and readily recognized manner. In the event of palpable difficulty in so doing, a notice concerning the licensing may otherwise be given at the business place or on other related articles.


Article 34 Grounds for revocation of license recordation

Whenever a licensee violates the provisions of the fourth paragraph of the preceding Article, should no remedial action be taken to make correction within a time period specified by the Trademark Office ex officio or upon request, the trademark licensing recordal shall be revoked.
Prior to the expiration of the term of a trademark license, in the event of any of the following circumstances, application for revocation of the license recordal may be filed by the party concerned or any interested party along with the relevant evidence:

1. where the trademark proprietor and licensee have mutually agreed to terminate the license. This provision shall apply to sublicense as well;

2. where it is specified in the licensing agreement that either the trademark proprietor or the licensee may unilaterally terminate the trademark license at its discretion and intent to terminate the license has been indicated by one party thereto accordingly; and

3. where the trademark proprietor has notified the licensee its intent to rescind or terminate the licensing agreement for breach of the provisions of the agreement by the licensee and the licensee has not raised any objection thereto.


Article 35 Recordation of assignment

Transfer of trademark rights shall be recorded with the Trademark Office. Unrecorded transfer shall have no locus standi against any third party.


Article 36 Indication required of trademark proprietors to prevent confusion resulting from transfer

Where, as a result of transfer of trademark rights, two or more trademark proprietors use identical trademark in relation to related goods or services or use similar trademarks in relation to the same or related goods or services thus likely to cause confusion among the related consumers, each of the trademark proprietors shall affix appropriate indication to distinguish its own goods or services.


Article 37 Recordation of trademark-related pledge

Where a registered trademark is deposited as the subject of a pledge by the proprietor, applications shall be filed with the Trademark Office to record the establishment, alteration and extinguishment of such pledge. Without recordation by the Trademark Office, such arrangements shall have no locus standi against any third party.
In the event of establishment of multiple pledges on trademark rights by the proprietor thereof to secure the multiple creditors¡¦ rights, the sequence of the pledges shall be determined in order of recordation.

During the validity term of the pledge, unless otherwise licensed by the trademark proprietor, the creditors shall not use the trademark.


Article 38 Waiver of trademark rights

A trademark proprietor may waive its trademark rights. The waiver shall, however, be subject to approval of the licensee or creditor, if there is any recordation of license or pledge against such registration.
The waiver as referred to in the preceding paragraph shall be made in writing before the Trademark Office.


Article 39 Grounds for lapse of trademark rights

Trademark rights shall lapse in the event of either of the following circumstances:
1. where no renewal has been made according to the provisions of Article 28; and

2. where the trademark proprietor is deceased without heirs.