Guide for Trademark Registration in Taiwan : Details on Procedures and Protection Period

What is the procedure to register a trademark in Taiwan? I’m a little confused and I’m having trouble understanding it.

To register a trademark in Taiwan, trademark application documents must be submitted for examination. Among the documents, a copy of the power of attorney and a priority certificate is also required if a priority right is claimed.

I see. What happens after the examination process is completed?

After an examination period, a public notice of trademark registration is issued. After the public notice, the trademark is officially registered.

【Taiwan’s Trademark System】

1. Introduction

The following is information that you should know when seeking trademark protection in Taiwan.

This article explains trademark protection in a way that even beginners can easily understand. We hope you will find it useful.

2. Trademark system in Taiwan

(1) Application route

Taiwan is a member of the WTO, so if you have filed a trademark application in Japan, you can claim priority right to the Japanese application. However, please note that Taiwan is not a signatory to the Madrid Agreement Protocol and is not allowed to file an application for international registration of a trademark based on Madrid Protocol.

(2) Language of application

Trademark applications in Taiwan are filed in Traditional Chinese.

(3) Types of trademarks

A wide variety of trademarks are protected in Taiwan, including letters, figures, symbols, colors, three-dimensional shapes, dynamics, holograms, and sounds.

Non-traditional trademarks such as position and smell are also protected.

However, the defensive mark system and the federated trademark system were abolished with the 1998 amendment.

Taiwan has also adopted a one-application, multiple-classification system, as well as a system of division of trademark applications and division of trademark rights.

(4) Subjects of protection

In Taiwan, general trademarks (goods and services), certification marks, collective marks, and collective trademarks are eligible for protection.

(5) Trademark classification

Taiwan has adopted the International Classification, but Taiwan is not a signatory to the Nice Agreement.

(6) Documents and information required for application

Several documents and information are required to file a trademark application including a copy of the power of attorney and a copy of the priority certificate (with Chinese translation), if priority is to be claimed.

Also submitted are a sample of the trademark, a class of designated goods or designated services, information on the applicant, and whether or not a priority right is claimed.

3. Trademark application process

The process from filing a trademark application to registration is as follows:

I.  Submitting application documents: A trademark application is filed with all the necessary documents and information. A copy of the power of attorney and a priority certificate (Chinese translation) are required if a priority right is claimed.

II. Examination Period: The application will be granted or refused approximately 8 months after filing. After the formality examination, all the requirements for registration are examined in the substantive examination.

III. Opposition: In Taiwan, there is no system of application publication, but a public notice is issued when a trademark registration is granted. Opposition may be filed within three months from the date of publication of the trademark registration. However, once the opposition is withdrawn, no further opposition or invalidation trial may be filed

IV. Registration: If no opposition is filed, the trademark is registered after publication.

4. Term and renewal of trademark protection

The term of protection of a trademark registration is 10 years from the date of publication of the trademark registration.

Trademark registrations may be renewed every 10 years.

Renewal procedures must be completed between the expiration dates and six months before the expiration dates.

After expiration of the term, renewal can be made within 6 months of the expiration date by paying double the renewal fee.

5. Taiwan Supreme Court’s Opinion on Parallel Imports

In Taiwan, the principle of exhaustion of trademark rights applies. If goods bearing a registered trademark are traded in the domestic or foreign market by the trademark owner or a person with his/her consent, the trademark owner may not claim trademark rights with respect to such goods.

In other words, if the trademark owner trades goods domestically or abroad, the parallel importation of those goods into Taiwan will not be considered an infringement of trademark rights.

However, there have been different opinions regarding the application of the principle of exhaustion of trademark rights when the same trademark is acquired by different trademark owners at home and abroad and they have a certain economic nexus.

A recent opinion of the Taiwan Supreme Court confirms that the principle of trademark exhaustion applies.

In a civil judgment of January 30, 2020 (108th Taishang Circular No. 397), the Taiwan Supreme Court held that “where a trademark proprietor acquires trademark rights in multiple countries for the same trademark by himself or by authorizing others to do so, if the trademark proprietors in different countries have a licensing relationship or a legal relationship with each other, exhaustion of the trademark right shall be effected against the authorized trademark proprietor.

6. Conclusion

The above is basic information on Taiwan’s trademark system. We have explained the trademark registration procedure, the term of protection, and the Supreme Court’s opinion on parallel importation.

In Taiwan’s trademark system, the trademark registration procedure is very important. After an examination period, a trademark is registered and protected for a certain period of time. It is advisable to keep these key points in mind when considering trademark use in Taiwan.

We recommend that anyone wishing to use a trademark in Taiwan use this information to follow the appropriate procedures.

•   We also have a form that allows you to easily apply for a foreign trademark application.⇒ Amazing DX Foreign Trademark Application

Also see our Taiwan Support Office webpage.

Feel free to consult a patent attorney!

Are you worried about your trademark all by yourself?

If you have any problems, please contact our experienced trademark attorneys!

Supervisor for the article:
Osaka Legal Strategy Department General Manager Akinori HACHIYA
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