SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan IP Practice

Post-Registration: Use and Marking Requirement

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  • 1
    Is the trademark owner required to submit evidence of use to maintain a registered trademark?
    1

    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. 

  • 2
    Is it possible to cancel a trademark registration on the ground of non-use?
    2

    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.

  • 3
    What is the definition of “trademark use”?
    3

    “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.

  • 4
    Does Taiwan’s Trademark Law allow a trademark owner to use his/her registered trademark in a modified form?
    4

    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. 

  • 5
    Is it possible to amend a registered trademark so that it may take the form of actual use?
    5

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

  • 6
    Is trademark marking compulsory?
    6

    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.

  • 7
    Which markings are advisable?
    7
    “TM”, “SM” or “Ò” may be applied to the upper right of a trademark.
  • 8
    What are the legal consequences of false or misleading marking?
    8

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

*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.