SAINT ISLAND INTELLECTUAL PROPERTY GROUP

(1)a representation of the applied-for mark; 
(2)a list of goods/services;
(3)details of the applicant, including name, address and nationality;
(4)an executed Power of Attorney; 
(5)filing date of the basic priority application (in case of claiming priority); and 
(6)the priority document (in case of claiming priority), i.e. a certified copy of the corresponding application from which priority is claimed.
 

*    Photocopies of the Power of Attorney and the priority document would suffice.
*    The requisite documents can be filed on a late basis. 
*    Neither actual use nor intent to use is required of a trademark application.
*    Taiwan’s IP Office accepts either single-class or multi-class applications.

After filing of a trademark application, the Registrar will conduct formality examination, and in case of any deficiencies in the documents submitted or inappropriateness in terms of the designated good/service, he/she will issue an Official Letter to require amendments/supplements. Once the formality requirements are fulfilled, the Registrar will proceed to conduct substantive examination in terms of the registrability of the applied-for mark to determine whether the mark is inherently distinctive or deceptive, and whether there is any prior filed or registered mark that would bar registration of the mark.  Generally, it takes about 8-12 months for a trademark application to go through the examination procedure if the application is prosecuted smoothly.  

If no objection/rejection is rendered or if the objection/rejection raised is traversed, Taiwan’s IP Office will issue a Notice of Allowance.  Upon payment of the registration fee on a per-class basis within two months from receipt of the Notice of Allowance, the IP Office will announce registration of the mark and issue the Certificate of Registration.

A post-registration opposition system is embraced in the Trademark Law.  Anyone may file an opposition against a trademark registration within 3 months from its registration date. 
 

Opposition proceedings in this country are conducted on a pleading-and-defense basis under which the two parties are allowed to alternately present their contentions in written form, and Taiwan’s IP Office, upon receipt of a brief/counterstatement lodged by one party, will serve a copy thereof on the other party along with a notification for filing a response before a designated deadline, which is generally within 30 days. This procedure will continue until the two parties have exhausted their views and have no observations or new evidence to file.
 

An assignment recordal can be conducted against a pending trademark application or registration.  As for licensing recordals, they can be conducted only after the relevant trademark applications have matured into registrations.

A trademark owner is not required to voluntarily submit evidence of use while his/her trademark registration subsists.  However, whenever a registered trademark, without justifiable cause, has been put to non-use for three consecutive years, or whenever, after a period of use, use of the trademark has discontinued for a term in excess of three consecutive years, the IP Office may, ex officio or at the request of an interested party, cancel the right to the exclusive use of the mark. 

The only document required is a photocopy of an executed Power of Attorney; neither notarization nor legalization is required. 

A trademark registration is renewable within the six months before or after the expiration of the durational term.  However, in the latter case, the official fee paid shall double the prescribed amount.

A registered mark will be vulnerable to cancellation by a third party if, without justifiable cause, the mark is not used for three consecutive years following its registration or if, after a period of use, use of the mark has discontinued for a period in excess of three consecutive years.

The duration term of a trademark registration is 10 years from the registration date and is renewable once every ten years. 

As a general rule, any Applicant, whose country of origin is a WTO member or who has a domicile or a place of business within the territory of a WTO member country, is entitled to claim priority in Taiwan based on the Applicant’s foreign trademark application first filed in any member country of the WTO within 6 months from the filing date in Taiwan.

While Taiwan's IP Office follows the 12^th edition of the Nice Classification of Goods/Services in classifying goods/services, not all the items listed in the Nice Classification of Goods/Services are necessarily acceptable.  To be specific, the IP Office requires that all the goods/services be defined in a precise manner.  As such, class headings are generally unacceptable for being too broad in definition, and such headings would be required to be further specified to conform to the local practice. 

(1)    a Deed of Assignment co-signed by the Assignor and the Assignee; and 
(2)    an executed Power of Attorney from the Assignee.  

Photocopies of the documents would suffice; neither notarization nor legalization is required. 
 

(1)a License Agreement co-signed by the Licensor and the Licensee, indicating the registration number(s) and goods/services designated by the licensed mark(s);
(2)an executed Power of Attorney from the licensor; and 
(3)an executed Power of Attorney from the licensee. 

Photocopies of the documents would suffice; neither notarization nor legalization is required.
 

(1)Fanciful trademarks: trademarks that are invented, coined or devised solely for a specific purpose, rather than derived from existing words or phrases.  Examples include “PANANSONIC” and “SONY” used on TVs, radios, etc.

(2)Arbitrary trademarks: trademarks that are composed of common and existing words or phrases and bear no relationship to the goods/services designated thereby.  Examples include “APPLE” used on computer-related goods.

(3)Suggestive trademarks: trademarks that imply, by way of metaphor, the shape, quality, function of the designated goods/services, or anything related to the composition, nature, property, function, or intended use of such goods/services, but are not necessarily or commonly used by traders to identify such goods/services.  Examples include “SNOW WHITE” used on facial cream, facial lotion, etc. 
 

“Trademark use” defined in the Trademark Law should be for marketing purposes and conforming to the commercial transaction habits.  Use of the trademark must be established in Taiwan.

The priority document must be submitted within the three months from the filing date.

A trademark application or registration is allowed to be standing in the name of two or more parties.

The following two types of trademarks are unregistrable for being destitute of distinctiveness: 

(1)a trademark that is indicative of the shape, quality, function or other descriptions of the designated goods/services; and 

(2)a trademark that is only composed of generic terms or symbols used in association with the designated goods/services. 
 

Use of a registered trademark in a modified form is allowed only if the modified trademark and the registered mark can be readily identified as one and the same. 

(1)a certificate of name change issued by a competent authority; and 
(2)an executed Power of Attorney with the new name indicated. 

Photocopies of the documents would suffice; neither notarization nor legalization is required. 
 

The only document required is a photocopy of an executed Power of Attorney with the new address indicated; neither notarization nor legalization is required. 

To amend a trademark after registration is in no event allowed.  It is necessary to file a new application.

An inherently indistinctive trademark shall become registrable after it has acquired a secondary meaning through long-term and extensive use.  While the evidential materials submitted to the IP Office in support of the secondary meaning acquired by a trademark are not restricted to those established in Taiwan, the IP Office gives more weight to those established in Taiwan.  However, a trademark consisted of a generic term or symbol only would in no event be registrable in spite of its long-term and extensive use.

As Taiwan is not a signatory to the Madrid Agreement or Madrid Protocol, it is not possible to extend an international registration to Taiwan.  To obtain a trademark registration in Taiwan, it is necessary to file an application with Taiwan’s IP Office.

It generally takes about 8-12 months for a trademark application to go through the examination procedure if the application is prosecuted smoothly.

Taiwan’s IP Office tends to regard three-dimensional, color, sound and motion trademarks to be lack of inherent distinctiveness.  Accordingly, it is general practice that an Applicant is requested to submit, at the time of filing, sales and/or advertising materials proving that such mark has obtained secondary meaning through long-term and extensive use.  

Trademark marking is not compulsory, but is advisable since it puts a potential infringer on notice as to the existence of the trademark. It also prevents a trademark from being genericized. Moreover, a trademark lacking distinctiveness is more likely to be recognized as having acquired its secondary meaning if it has been used with a marking.

The disclaimer doctrine is embraced in the Taiwan Trademark Law.  To be specific, where a trademark includes a word, character, device, symbol, color or three-dimensional shape, which is descriptive or non-distinctive and deletion of such element will deprive the trademark of its integrity, the exclusive right to use the particular element can be disclaimed in favor of registration of the trademark. 

After entry of a disclaimer of a non-distinctive component, the Applicant can still claim their exclusive right to the trademark in its entirety.
 

Yes, the Applicant may request expedited examination of a trademark application before the first Official Letter issued by IP Office.

Any distinctive indication composed of a word, character, device, symbol, color, three-dimensional shape, motion, hologram, sound, etc., or any combination thereof. 

A letter of consent signed by a cited mark owner to co-existence of the two parties’ marks and filed with Taiwan’s IP Office may overcome a citation rejection, except where the marks concerned are identical and designated for use on the same goods/services.

The legal consequences of false or misleading marking include a fine, criminal liability or civil liability.

Trademarks, certification marks, collective marks and collective trademarks.

GIs are protected by way of certification marks or collective trademarks, and agricultural products, food products, wines, spirits and handicrafts are subject to GI protection. 

Although trademark search is not mandatory, we tend to suggest to our client to perform a search prior to filing to ensure that use of the proposed trademark would not expose him/her to the risk of infringement.  In the meantime, it helps in evaluation of availability of the trademark.