Taiwanese Trademark Procedure: How to Cease a Trademark
Produced by Zoomlaw Attorneys-at-Law
17th November 2014
- 1. Opposition:
The relevant legislation for opposition of trademark is Section IV of the Trademark Act 2011.
l Any person can file an opposition to registration of a trademark with the Registrar Office within three month from the day following the date of publication of registration (Article 48)
l The facts and grounds must be stated and any attachments shall be enclosed with the filed opposition.
l Once the opposition is filed and sent to the Registrar Office, the proprietor of the opposed trademark will be served a copy and may submit a statement of defense. The Registrar Office shall then serve a copy of the statement to the opponent who may submit an opinion on said statement. However, if the statement or opinion is likely to delay the proceedings, or where the facts and evidence are sufficiently clear, the Registrar Office may conduct opposition proceedings directly.
l The opposition shall be examined by an examiner who didn’t participate in the examination of the application for registration of the opposed trademark (Article 51)
l If the opposition is sustained, the registration of the trademark shall be cancelled (Article 54)
(Cancellation Proceedings)
- 2. Invalidation:
The relevant legislation for invalidation of trademark is Section V of the Trademark Act 2011.
l File invalidation with the Registrar Office or a trademark examiner submits a proposal to the Registrar Office for invalidation (Article 57)
l If the registration has been published for not less than five years, no invalidation shall be filed. However, this time limit shall not apply to invalidation against a trademark that falls under Subparagraph 9 (similar geographical indication for wines or spirit) or 11 (similar to another well-known trademark) Article 30 (Article 58)
l The invalidation proposal will be examined by three or more examiners assigned by the head of the Registrar Office (Article 59)
l If the invalidation is passed, the registered trademark shall be cancelled. However, if the circumstance on which a trademark is invalid no longer exists, a proposition to overrule the invalidation may be considered – basically stating the an invalidated trademark can, in specific situation, be rendered valid again (Article 60)
- 3. Revocation:
The relevant legislation for revocation of trademark is Section VI of the Trademark Act 2011.
l Can be filed when the trademark owner violated some regulations (Article 63):
n alteration of, or addition to, the trademark
n lack of use of the mark
n failure to attach appropriate distinctive symbols under Article 43
n a mark's becoming descriptive of the name or shape of the designated goods or services
n a mark that is likely to lead the public into misidentification or misconception in respect of the characteristics, quality, or place of origin of the merchandise
l A copy of the revocation will be served to the proprietor of a registered trademark by the Registrar Office who may submit a defense statement. The Registrar Office shall then serve a copy of the statement to the opponent who may submit an opinion on said statement. A request for revocation may be dismissed directly if it is lacking evidence and concrete facts or based on obviously groundless claims.
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