Trademark Rules

Article 001 ~ Article 041 & APPENDIX

Article 1 Foundation

These Rules are prescribed pursuant to Article 93 of the Trademark Law (hereinafter referred to as "this Law").


Article 2 Standard forms required

All applications made in accordance with this Law or these Rules shall utilize the forms formulated by the Trademark Office and signed or stamped by the applicants according to the prescribed number of copies. Where trademark agents are appointed, the agents' signature or chops shall suffice.


Article 3 Application filed with claim for foreign priority
With respect to application for registration of a trademark or collective trademark in the nature of a single color, three-dimensional shape or sound with a priority claim, where the priority date is anterior to November 28, 2003, November 28, 2003 shall serve as the priority date.

Article 4 Representation by agent or attorney
Whenever a person is appointed as a trademark agent, an original copy of the power of attorney specifying limitations on the power of the agent shall be submitted.

The power of attorney referred to in the preceding paragraph may be a general one empowering the agent to handle one or multiple trademark application filing, application or registration details change recordal, opposition, invalidation, cancellation and any other associated matters at present or in the future.

Where the original copy of the general power of attorney referred to in the preceding paragraph has been submitted to the Trademark Office, a photocopy of the power of attorney is sufficient to enable the agent to execute the subsequent procedures set forth in the power of attorney. The Trademark Office may, however, notify the agent to submit document proving the existence of authorization, if deemed necessary.

When submitting a photocopied power of attorney in accordance with the provisions of the preceding paragraph, the agent shall declare it is a true copy while identifying the case with which the original copy is retained.


Article 5 Certificate of Identity/Corporation
In the event of application for trademark registration, where it is deemed necessary, the Trademark Office may notify the applicant to submit a certificate of identity/nationality or a certificate of corporation.

Article 6 Provisions related to language of documents
Documents submitted in connection with trademark applications or trademark-related matters shall be in the Chinese language. Whenever the evidentiary documents or any other documentation are in a foreign language, a full or partial Chinese translation shall be annexed thereto.

Article 7 Special provisions related to filing date
Application filed before November 28, 2003 for registration of a trademark or collective trademark in the nature of single color, three-dimensional shape or sound shall take a filing date of November 28, 2003.

Article 8 Format of trademark specimens
When applying for the registration of a trademark, an applicant shall submit application form annexed by five copies of the trademark not exceeding eight centimeters by five centimeters in size and two additional copies in black and white, if the trademark is in color.

Article 9 Drawing requirements for color trademark
When applying for the registration of a color trademark, an applicant shall specify the nature of the mark in the application form with the pertinent explanations on the color per se.

In connection with the trademark referred to in the preceding paragraph, the applicant may demonstrate by dotted lines how it is applied to the designated goods or services in actual use, including its manner of use, position or mode of use.

The dotted lines do not constitute a part of the color trademark.


Article 10 Drawing requirements for sound trademark
When applying for the registration of a sound trademark, an applicant shall specify the nature of the mark in the application form and submit representation of the sound by means of staff, numerical note or written description, as well as optical disk pre-recorded with the sound. Where staff or numerical note is chosen to represent the sound, pertinent explanations shall be submitted therewith.

Article 11 Drawing requirements for three-dimensional trademark
When applying for the registration of a three-dimensional trademark, an applicant shall specify the nature of the mark in the application form and submit representation of the shape by means of three-dimensional drawings, as well as pertinent explanations.

The applicant may simultaneously submit no more than five drawings or samples showing the shape in different angles under the same proportion to precisely illustrate the three-dimensional shape. When it is deemed necessary, the Trademark Office may also notify the applicant to submit such material.

Where the three-dimensional shape referred to in the preceding two paragraphs includes any part not claimed in the application, apart from marking the claimed part by solid line, the applicant shall show the disclaimed part by dotted line with a disclaimer statement.


Article 12 Definition
The term "visually perceivable specimen" referred to in the second paragraph of Article 17 of this Law means a specimen which may enable consumers of ordinary knowledge and experience to recognize the word, character, device, symbol, color, or any combination thereof included in the trademark through the sense of sight.

Article 13 Classification of Goods and Services
Any applicant for the registration of a trademark shall designate in order, according to the official Classification of Goods and Services, the class number and goods or services in respect of which registration is being sought.

In connection with trademark registered prior to revision of the Classification of Goods and Services, the designated class of goods or services shall be determined by that as registered. With respect to unregistered trademark, the class of goods or services designated at the time of filing shall remain unchanged.


Article 14 Failure to reach agreement in due time
Whenever, pursuant to the provisions of Article 18 of this Law, multiple trademark applicants are required to come to agreement, the Trademark Office shall notify each applicant of a time limit within which agreement must be reached. If no agreement can be reached within the designated time limit, the Trademark Office shall notify the applicants of a date and location for the drawing of lots.

Article 15 Amendment to details of application/registration
When filing an application for the recordation of any change in the details of a trademark application or registration, the applicant shall submit an application form along with the evidentiary document.

Article 16 Definition of "well-known mark"
The term "well-known mark" as referred to in this Law indicates any mark which has been proved by objective evidence that it is widely acknowledged amongst the relevant businesses or consumers.

Article 17 Applicability of Article 23(16)
The name of a legal entity, business firm or other group referred to in Item 16, the first paragraph of Article 23 of this Law, indicates the specific part of the name of the legal entity, business firm, or group.

Article 18 Evidence of "secondary meaning"
Whenever a trademark applicant asserts applicability of the provision of the fourth paragraph of Article 23 of this Law, it shall submit relevant evidence to prove it.

Article 19 Renewal application
When applying for the renewal of a trademark registration, application form shall be submitted with respect to all or part of the designated goods or services.

Article 20 Restriction of goods/services without adverse effect on the filing date
Restriction of the goods or services designated by a trademark application before completion of the examination shall have no adverse effect on the filing date.

Article 21 Formality requirements for assignment recordation
Application for the recordation of transfer of rights derived from a trademark application shall be accompanied by application form and assignment or other documents certifying the transfer.

Article 22 Filing of divisional applications (1)
When applying for the division of a trademark application, application form shall be submitted with additional copies thereof according to the number of divisional applications, along with the requisite documents for trademark application.

Article 23 Filing of divisional applications (2)
When applying for the division of a trademark application in the interim between issuance of notice of allowance and announcement of registration, application form shall be submitted with additional copies thereof according to the number of divisional applications, in which the goods or services designated for the divisional applications shall be specified.

The trademark application referred to in the preceding paragraph shall be divided only after payment of the registration fees and announcement of registration.


Article 24 Filing of divisional applications (3)
When applying for the division of a trademark registration, application form shall be submitted with additional copies thereof according to the number of divisional registrations, in which the goods or services designated for the divisional registrations shall be specified.

Upon approval of the division of a trademark registration, the Trademark Office shall issue a Certificate of Registration to the divisional trademarks respectively.


Class 25 Opposition to trademark registration later divided (1)
Subsequent to announcement relating to division of a trademark registration, the Trademark Office shall notify the person, who raised an opposition to the trademark registration before its division, to reappoint the opposed trademark within a prescribed time limit and submit respective requisite documents. The Trademark Office shall then recalculate the payable government fees based upon the number of opposed trademarks. Surcharge shall be paid, if necessary. The opponent may submit the official receipt with request for refund of overpaid government fees, if any.

Article 26 Opposition to trademark registration later divided (2)
Where division of a trademark registration is allowed prior to release of a decision on the opposition thereto, the Trademark Office shall notify the opponent to confirm its intention to continue with the opposition in relation to all divided registrations within a prescribed time limit. In the event of the opponent's failure to do so, review of the opposition shall be resumed in relation to all divided registrations.

Article 27 Opposition to trademark registration later divided (3)
Where division of a trademark registration or restriction of the specification of goods or services thereof is allowed in the midst of the administrative remedial proceedings against an opposition, the Trademark Office shall notify the competent authority in charge of the administrative remedial proceedings and the opponent of the matter.

Where division of a trademark application or restriction of the specification of goods or services thereof is requested prior to finalization of the Office Action, the provisions of the preceding paragraph shall apply mutatis muntadis.


Article 28 Applicability of other Articles
The provisions of Articles 25 and 26 and of the first paragraph of the preceding Article shall apply, mutatis mutandis, to invalidation and cancellation proceedings.

Article 29 Formality requirements for license recordation
Application for the recordation of a trademark license filed by the trademark proprietor or licensee shall be accompanied by application form, in which the licensee, registration number, durational term, class number, and licensed goods or services shall be specified.

The application for the recordation of a trademark license filed by the licensee referred to in the preceding paragraph shall additionally be accompanied by the licensing agreement signed or stamped by the two parties, an extract thereof, or other documents certifying the license.

Application for the recordation of a trademark sublicense shall be accompanied by a written consent from the trademark proprietor to the sublicense.

The goods or services and term under the license shall not be beyond the scope of the licensed trademark rights. Where the term of license provided in the agreement exceeds the durational term of the licensed trademark rights, the expiry date of the trademark's durational term shall serve as that of the license term. Application for the renewal of a trademark license recordation shall be filed subsequent to renewal of the durational term of the licensed trademark rights.

The goods or services and term under the sublicense shall not be beyond the coverage of goods or services and term of the original license.


Article 30 Formality requirements for assignment recordation
Application for the recordation of transfer of trademark rights shall be accompanied by the application form and assignment or other documents certifying the transfer.

Article 31 Formality requirements for recordation of pledge
Application for the recordation of a pledge over trademark rights shall be accompanied by the application form, in which the trademark, registration number, amount of debt and duration of the pledge shall be specified. In addition, the following documents shall be submitted:

1. the contract in relation to the pledge or other documents certifying the pledge in the event of an application for the recordation of a pledge;

2. documents certifying change in the recorded pledge in the event of an application for change in the pledge recordation; or

3. documents evidencing the repayment of debt or documents certifying the pledgee's consent to revoke the pledge recordation, in the event of an application for the recordation of extinguishment of the pledge.

The term of a pledge recordation shall not exceed the durational term of the trademark rights. Where the term of a pledge provided in the contract exceeds the durational term of the trademark rights, the expiry date of the trademark rights shall serve as that of the pledge term. Application for the renewal of the pledge recordation shall be refiled subsequent to renewal of the durational term of the trademark rights.


Article 32 Issuance of replacement Certificate of Registration

Whenever a Certificate of Registration is destroyed or lost, the trademark proprietor shall submit a written explanation when applying for a replacement Certificate.

Whenever a replacement Certificate of Registration is issued in accordance with the preceding paragraph, a notice of nullification of the original Certificate shall be published.


Article 33 Effective date of lapse of trademark rights

The effective day of lapse of the trademark rights as referred to in Article 39 of this Law shall be decided by any of the following:

1. where no action is taken to renew a trademark registration in accordance with Article 28 of this Law, the day following the date of expiration shall serve as the effective day; and

2. where the trademark proprietor is deceased without heirs, the day of decease shall serve as the effective date.


Article 34 Provisions relating to opposition

When filing an opposition in accordance with Article 40 of this Law, an opponent shall submit a written opposition as well as the pertinent evidence in duplicate. The Trademark Office may, however, notify the opponent to submit a certificate of nationality or corporation if deemed necessary.

Where the facts and reasons contained in the written opposition are deemed unspecific or incomplete, the Trademark Office may notify the opponent to submit an amendment within a designated period of time.

The opponent may, within three months after the registration announcement, make alterations or additions to the asserted facts or reasons.


Article 35 Counter-statement against opposition

The counter-statement referred to in the third paragraph, Article 41 of this Law shall be lodged in duplicate by the trademark proprietor within the period prescribed by the Trademark Office.

The Trademark Office shall serve a copy of the counter-statement upon the opponent.


Article 36 Applicability of other provisions
Where a request for invalidation or cancellation of a trademark registration is made, the provisions of the first and second paragraphs of Article 34, as well as of the preceding Article shall, mutatis mutandis, apply.

Article 37 Time limit for claiming exhibits and other articles
Any person who, having submitted exhibits or articles in connection with a trademark?related matter, has requested that they be returned, shall within thirty days from the date upon which a decision on the matter has become final, retrieve the submitted items.

Article 38 General requisites of certification mark application

When filing an application for the registration of a certification mark, an applicant shall specify in the application form the following matters:

l. goods or services being the object of certification;

2. items distinguished by the certification mark;

3. conditions for the use of the certification mark;

4. documents proving the applicant's qualifications or competence to certify goods or services;

5. rules governing the use of the certification mark; and

6. a statement to the effect that the applicant will not engage in the production and marketing of the goods or in the provision of the services.


Article 39 General requisites of collective mark application

When filing an application for the registration of a collective mark or collective trademark, an applicant shall submit application form accompanied by a certificate of corporation and rules governing use of the mark.

The rules governing use of the mark referred to in the preceding paragraph shall set forth the qualifications for membership and methods for controlling use of the mark.


Article 40 Uniformity of provisions
The provisions of these Rules relating to trademarks shall apply, mutatis mutandis, to certification marks, collective marks and collective trademarks.

Article 41 Effective date
These Revised Rules shall become effective as of the date of promulgation.

APPENDIX Classification of Goods and Services

Goods

1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs, tanning substances; adhesives used in industry.

2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.

5. Pharmaceutical, veterinary, and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

6. Common metals and their alloys; metallic building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires; ironmongery, small items of metal, hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.

8. Hand tools and implements (hand operated); cutlery; side arms; razors.

9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life?saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; instruments and devices for conducting, switching, converting, accumulating, adjusting or controlling electricity; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire extinguishing apparatus.

10. Surgical, medical, dental, and veterinary apparatus and instruments; artificial limbs, eyes, and teeth; orthopedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air, or water.

13. Firearms; ammunition and projectiles; explosives; fireworks.

14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

15. Musical instruments.

16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

19. Building materials (non-metallic); non-metallic pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

20. Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother?of?pearl, meerschaum and substitutes for all these materials, or of plastics.

21. Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brushing-making materials; articles for cleaning purposes, steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

23. Yarns and threads for textile use.

24. Textiles and textile goods, not included in other classes; bed and table covers.

25. Clothing, footwear and headgear.

26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non?textile).

28. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

29. Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, vinegar, sauces (condiments), spices; ice.

31. Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

33. Alcoholic beverages (except beer).

34. Tobacco; smokers' articles; matches.

Services

35. Advertising; business management; business administration; office functions.

36. Insurance; financial affairs; monetary affairs; real estate affairs.

37. Building construction; repair; installation services.

38. Telecommunications.

39. Transport; packaging and storage of goods; travel arrangement.

40. Treatment of materials.

41. Education; providing of training; entertainment; sporting and cultural activities.

42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

43. Services for providing food and drink; temporary accommodations

44. Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services

45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.