SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan IP Practice

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  • 1
    What are the examination procedures of a trademark application?
    1

    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.  

  • 2
    Does Taiwan adopt the International Classification System?
    2

    While Taiwan's IP Office follows the 12th 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. 

  • 3
    Which trademarks are inherently distinctive for registration purpose?
    3

    (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. 
     

  • 4
    Which trademarks are indistinctive for registration purpose?
    4

    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. 
     

  • 5
    Can a trademark lacking distinctiveness become registrable by virtue of use?
    5

    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.

  • 6
    What are the distinctiveness requirements for Three-Dimensional, Color, Sound and Motion Trademarks?
    6

    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.  

  • 7
    Does Taiwan adopt the doctrine of disclaimer?
    7

    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.
     

  • 8
    Can a letter of consent be filed to overcome a citation rejection?
    8

    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 above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.