FAQ: Trademark

Taiwan employs a registration system for trademark protection.  A registered trademark entitles the trademark owner to have exclusive rights to:

• use the trademark for the designated goods or services specified in the registration;
• license the trademark to others; and
• exclude others from registering an identical or similar trademark(s) for the same or similar goods or services.

If others use the registered trademark without the trademark owner’s consent and infringe or are likely to infringe the trademark right, the trademark owner may demand said others to stop or prevent such infringement and claim for damages if such infringement is made intentionally or negligently. (§2, §30Ⅰ⑩, §68, §69, Trademark Act)

The registration effect of a trademark right is restricted to the jurisdiction where the trademark is registered.  Therefore, if a trademark owner wants to promote goods in other countries using trademark(s) registered in Taiwan, it is recommended that the same trademark(s) be registered in those countries to avoid infringing others’ trademarks.

In practice, a trademark application should be filed using a reproduction of the trademark that is actually used or expected to be used.  If a trademark application is filed by use of a black-and-white or single-color reproduction of the trademark and another color is adopted in actual use of the trademark, the situation may still be deemed as use of the registered trademark in principle only if the major distinguished features of the registered trademark is not substantially changed.

Furthermore, if the reproduction of a registered trademark includes two or more colors which are crucial in identification of the trademark, and black-and-white or another color is adopted in actual use of the trademark, then it is very likely to alter the commercial impression created by the trademark recognized by relevant consumers as an indication of the source.  Therefore, it will not be regarded as use of the registered trademark.

The Taiwanese IPO conducts only formality examinations with respect to designated goods and services.  In other words, the Taiwanese IPO only examines whether the names of the designated goods or services are specific and acceptable, and whether the classes of goods or services meet the International Classification of Goods and Services (The Nice Classification).  Therefore, it is not necessary to submit any business license when applying for a trademark registration.

The function of a trademark is mainly to indicate the source of goods or services. Only if a trademark as a whole is distinctive, it can function as a trademark.  However, an applicant is inclined to include some non-distinctive elements such as descriptions relating to the quality, function or place of origin of the goods or services or advertising slogans in the reproduction of a trademark to apply for registration for business promotion purposes.

Although the trademark as a whole is distinctive, the trademark owner and his/her competitors may have different opinions concerning if the trademark owner has the exclusive right to use the foregoing elements included in the reproduction of a trademark.  Specifically, if a trademark owner claims his/her rights on the non-distinctive element of a trademark against competitors, it would likely affect fair competition and order in the market.

In the past, an applicant was required to delete descriptive or non-distinctive parts and then the trademark application can be registered.  However, such practice is not reasonable and a disclaimer system was thus introduced. Specifically, with a disclaimer, a trademark owner agrees not to claim his/her rights on the unregistrable parts of the trademark, such as a descriptive or non-distinctive element.

In this way, a trademark that is distinctive as a whole may keep the element that is not registrable alone.  For more information in practice, please refer to the “Examination Guidelines on Disclaimers”.

The examination procedures for a trademark application are more complicated compared to those for general applications.  In addition to examining the designated goods or services listed in the application, a search of the reproductions of prior registered trademarks and examination on whether any unregistrable conditions exists must be carried out.  Currently, there are more than 2,170,000 registered trademarks (as of 2019.03.01) and the examination of a trademark application takes approximately six to seven months.  The examination duration is calculated from the date of receipt of a trademark application and excludes periods for submitting an amendment, a reponse, a statement of defense or extensions due to other legitimate reasons.

It is not mandatory to register a trademark in Taiwan.  An applicant can use a trademark to identify his/her goods or services before acquiring a trademark right.  However, a trademark user shall not infringe any trademark right of others when using his/her trademark. (§2, Trademark Act)

When the registration was accepted for a trademark application, it will be published in the Trademark Official Gazette by the Taiwanese IPO after the applicant pays the registration fee within two months from the receipt date of the Notice of Allowance.  The applicant shall be entitled an exclusive right of the trademark for a period of ten years from the date of publication of registration.

The period of a trademark right may be renewed by filing a renewal application within six months before the expiration date, if the trademark owner wishes to keep on using the trademark.  And the duration of each renewal period shall be ten years counting from the next day of the expiration date.  The trademark owner shall request for a renewal for all or some of the designated goods or services for which it is registered by filing a written request. (§35, Enforcement Rules of the Trademark Act)

Registrations of a trademark and a company are different in light of respective laws, regulations and purposes, as well as the nature of rights to be identified.  Hence there is essentially no conflict between the two.  However, a company name registered in accordance with the Company Act does not necessarily exclude itself from stipulations of other statutory laws and regulations, such as the Trademark Act, the Fair Trade Act, etc.

If someone uses some characters in a registered trademark as his/her company name, the trademark owner may seek a remedy based on Article 70 of the Trademark Act or Paragraph1, Article 22 of the Fair Trade Act to avoid unfair competition due to a renowned trademark being used as other’s company name.  As for whether the aforesaid stipulations apply for any specific case, the court or the Fair Trade Commission shall make judgment according to the concrete evidence presented.

The designated goods or services of a trademark are not allowed to change after applying for the trademark registration, unless the change is a restriction of the designated goods or services. Accordingly, it is not allowed to add designated goods or services, even if the added goods or services belong to the same or similar classes with the original designated goods or services. (§23, Trademark Act)

The registration of domain names adopts first come, first served principle.  However, a trademark owner may take the following actions if his/her trademark was registered as a domain name by others:

1. knowingly using some characters contained in another person’s well-known registered trademark as a domain name, which may result in a likelihood of confusing the public or a likelihood of diluting the distinctiveness or reputation of the well-known trademark, though not used as a trademark, may constitute a trademark infringement and the infringer shall bear civil tort liability. (70②, Trademark Act)
2. According to Article 5 of the Domain Name Dispute Resolution Policy, anyone may file a complaint with the domain name dispute resolution service providers if he/she finds a registered domain name identical or confusingly similar to his/her trademark, mark, personal name, business name, or other signs such that there exists a likelihood of confusion.  Upon receipt of such a complaint, the expert teams at the dispute resolution service providers shall decide to cancel or transfer the domain name.  Currently, there are only two domain name dispute resolution service providers, Science & Technology Law Institute (STLI) and Taipei Bar Association.

The disclaimer system is a precautionary measure to avoid disputes over trademark rights during examination process.  Whether or not a disclaimer is stated for any specific element in a trademark application is not the only basis to judge whether the trademark application shall obtain a trademark right.  A trademark owner has the exclusive right to use the overall trademark for the designated goods/services after registration, rather than the exclusive right to use a specific element of the trademark.

To judge if a trademark is likely to confuse relevant consumers, we should observe the reproduction of the trademark as a whole.  In other words, no matter a disclaimer is stated or not for a non-distinctive element of a trademark, whether the trademark is likely to confuse relevant consumers is judged according to respective conditions of each case.

A trademark is used to identify goods that are produced by somebody or for which somebody acts as an agent.  A general agent, for promoting and advertising the goods he selects or sells in Taiwan, may apply for the foreign trademark registration in his/her own name with the original trademark owner’s consent.

However, if the general agent is authorized to act as marketing agency only, without the original trademark owner’s consent, the general agent may not apply for the foreign trademark registration in his/her own name.  Instead, the application shall be filed in the name of the original trademark owner.

Let us consider a situation in which an applicant files an application for trademark registration that is identical with or similar to an earlier used trademark and designates goods or services identical with or similar to the earlier used trademark, and the trademark is registered.  If the trademark owner is later proved to have been aware of the existence of the earlier used trademark due to contractual, regional, business connections, or any other relationship with the earlier used trademark owner, then the registered trademark may still be revoked after registration. (§30Ⅰ⑫,§48,§57, Trademark Act)

A trademark owner has the exclusive right of using the trademark for the designated goods or services from the publication date of registration.  A trademark owner is required to use his/her trademark which is identical with the registered trademark on the designated goods or services.  Let us consider a situation in which someone applies for trademark registration based on a reproduction of the trademark consisting of many trademarks to save filing fees, and the trademark is registered.

Under the circumstance, the trademark owner cannot use only a part of the registered trademark nor use each part of the registered trademark separately, either one inevitably causes different impressions compared to the situation that the registered trademark is used as a whole.  Otherwise, it will be deemed as not using the registered trademark and the registered trademark may be revoked. (§35Ⅰ, §63Ⅰ, Trademark Act)

If the trademark owner uses the trademark in a form slightly different from the registered trademark (for example, the size, proportion, font or writing arrangement of the reproduction of a trademark is changed) without substantially changing the main features of the registered trademark and the identity of the trademark is not affected according to general concepts in the society, then it constitutes use of the registered trademark.(§64, Trademark Act)  However, if use of the trademark does not include the main features of the registered trademark and has a significant difference from the registered trademark, it would not be deemed as use of the trademark.

No amendment shall be made to the reproduction of a trademark and the designated goods or services thereof after the trademark has been registered. (§38Ⅰ, Trademark Act)  On the other hand, if there is any change in the trademark owner’s registered items, the applicant shall send a written letter to the TIPO for correction.

Specifically, if the delivery address is to be changed, there is no need to attach evidence showing the change.  However, if the trademark owner’s name, representative, seal or agent is to be changed, it is necessary to attach related documentation showing the change. (§25 applied mutatis mutandis to §37, Enforcement Rules of the Trademark Act)

Applications for changing the particulars of trademark registrations shall be filed for each trademark respectively.  However, if a trademark owner possesses two or more trademarks and wishes to make the same changes to the particulars of these trademark registrations, he/she can make changes to the particulars thereof simultaneously with one application, but the official fees for the changes are calculated based on the number of trademarks. (§25 applied mutatis mutandis to §37, Enforcement Rules of the Trademark Act)

According to Paragraph 1, Article 38 of the Trademark Act, no amendments shall be made to the reproduction of a trademark and the designated goods or services thereof after the trademark has been registered, unless such amendment is a restriction of designated goods or services.

Renewal of a trademark right is an extension of the period of the trademark right, which is subject to the restriction that the reproduction of a trademark or the designated goods or services thereof cannot be amended after registration. The protection scope of a trademark right after renewal is thus the same as that before renewal. Therefore, it is not allowed to add designated goods or services by paying more renewal fees.

According to the Trademark Act, the trademark owner can take civil procedure and criminal procedure to seek remedies listed below.

1. Civil procedure
   A trademark owner is entitled to demand a person who infringes or is likely to infringe his/her trademark right to stop or prevent such infringement and ask for damages from the infringer who knowingly, or with reasonable grounds to know.  Moreover, to solve the difficulty for a trademark owner to prove the damage, Article 71 of the Trademark Act provides four methods wherein a trademark owner can choose one therefrom to claim his/her damages.
2. Criminal procedure
   Any person who produces and sells counterfeit products may be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NTD＄200,000.  Any person who knowingly sells or, due to an intent to sell, possesses, displays, exports, or imports another person’s counterfeit products, may be liable to imprisonment for a period not exceeding one year and/or a fine not exceeding NTD＄50,000.
3. For a trademark infringement, both civil and criminal liabilities shall be determined through judicial procedures.  In addition to filing a lawsuit, the trademark owner can also file a report with relevant evidence of use to the Second Special Police Corps by contacting the complaints line 0800-016597 or email to 0800016597@iprp.spsh.gov.tw.