Trademark registration procedure in Taiwan
Trademark application assistant Chen Peng
Taiwan employs a first-to-register system for trademark protection. Article 2 of the Trademark Law in Taiwan expressly indicates that “Any person who wishes to obtain the rights of trademark, certificate mark, collective membership mark, or collective trademark shall apply for registration therefore in accordance with this Act.”
Applicant should be subjective to ensure the purpose of application but to be objective when representing its sales of commodities. For its business operation, it is necessary to comply with Rule 5 of the Enforcement Rules of Trademark Act, including its company registration, business registration, operation business, or specific business plans, shareholder meetings or any other related matters.
Therefore, as long as the person fulfilled its requirements listed above, any natural persons, legal person or foreigners would be qualified to apply.
2. Trademark Attorney
Anything in relation to trademark registration or all the other legal matters, unless it is handled by person itself, you can appoint an agent to do so. Trademark Attorney is defined as a natural person that has its means of country residence, to act for the interest of the parties, to seek its trademark license, approval, or other acts of authorization according to the Public Law for its trademark application.
3. Required documents and description
In order to register its trademark, the applicant should get all the documentations ready including its application, name of the trademark, appointed use of goods and services and its classification to its Intellectual Property Office for registration. According to its classification of goods and services, such application should be clearly listed in order to determine its scope of trademark right. On the other hand, trademark applicant may appoint two or more categories of goods or services when lodging its trademark application.
According to its Trademark Act regulation, applicant shall include its trademark description or its non-distinguishable characteristics into its trademark application. The purpose for such standard is to prevent any disputes arises for the scope of trademark rights. In order to prevent such situation, its Trademark Authorities would, according to its powers according to the law, to simplify its review process to improve its productivities.
4. Amendments to application
Changes to the name or address of the applicant, the trademark agent, or any other particulars in an application for registration shall be made by filing a request therefor with the Registrar Office.
Unless such amendment is a restriction of designated goods or services or an amendment to the reproduction of a trademark which does not substantially change such trademark. By narrowing the scope of application would not derogate its efficiency on examination nor to influence its calculation period. Such amendment would not be restricted. (Article 23 and 24 of Trademark Act)
5. First-to-register system
To obtain its trademark rights, it should be reviewed in accordance with the application period, if such trademark is found to be the same or similar to the other trademark, the first-to-register person would grant its trademark right.
(Trademark Act Article 30 (10))
The Competent Authority of this Act is the Ministry of Economic Affairs (hereinafter as the MOEA). Trademark affairs shall be administered under a registrar office appointed by the MOEA. (Trademark Act Article 3).
7. Dates and Time
According to its period calculation, there is no express provision listed in the Trademark Law. However according to the Civil Code Section 120, the beginning date shall not be included into such calculation, such interpretation shall be adopted to have its same effect here. The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of ten years from the date of publication of registration.
8. Trademark Priority
According to Article 20, an applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with the ROC, or filed such application with a member of the World Trade Organization, may claim a right of priority, for the purpose of registering the same trademark in the ROC for some or all the same goods or services, within six months from the day following the date of filing of the first such application.
An applicant of a foreign country which is not a member of the WHOT nor a country having reciprocal recognition of priority rights with the ROC, may claim a right of priority pursuant to the preceding paragraph if he/she is domiciled or has a business establishment in the territory of a country which has reciprocal recognition of priority rights with the ROC or in the territory of a member of the WTO.
The purpose for such priority system is that during a certain period, in order to prevent its trademark applicant to regret not to receive its global protection due to its first-to-register system, the trademark applicant can receive its protection without its territorial limits.
9. Service and report
Delivery person means a form of administrative action for its Trademark authorities to follow certain procedures to have its documentations and other specific matters delivered to the other parties. Once such documentation is delivered, such documentation is considered as valid in the eyes of law.
In order to prevent any confusion for its consumer products and services, the Trademark Authorities shall print and publish its recent approved registered trademark and all other related matters to public, in order to prevent misuse of its registered trademark by mistake.
Cheng-Ming-Ru Cheng, The Principles of Trademark Law, August 2000, Cheng-Ming-Ru Cheng.
Du-Chun Wang, Principles of Trademark Law, February 2011, 2nd edition, Fifth South.