Understanding the Taiwan trademark system
Any legal entity or natural person is eligible to apply for a trademark before the Taiwan Intellectual Office (TIPO). Those without a Taiwanese address must appoint a representative, who, in most cases, is a trademark agent. Under current law, anyone with a domicile in Taiwan can be a trademark agent. Thus, it is advisable to procure a specialised law firm to ensure better administrative procedures and quality in legal proceedings.
Taiwan trademark practice uses registration protection and the first-to-file principle (ie, trademark registration is necessary to obtain trademark rights and the sequence of rights acquisition correlates with the examination of trademark applications). The exclusive right of trademark protection is 10 years from the date of publication for registration and can be extended every 10 years thereafter.
The Taiwanese trademark system refers to the Nice Classification and permits multi-class applications, with official fees calculated based on the number of categories. In addition, special logos can be displayed with ‘™’ or ‘®’.
Right of priority and international regulations in Taiwan
Due to its unique international status, Taiwan is not a member of WIPO. However, in 2001 it acceded to the World Trade Organisation (WTO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Moreover, Taiwan is a party to numerous bilateral agreements, letters of intent and memorandums of interest related to IP rights.
In accordance with Article 2 of the TRIPS Agreement, members must comply with the Paris Convention, especially Article 3, on the principle of quasi-national treatment, which establishes that those who are not nationals of member states but have a domicile or place of business within the territory of a member state may also claim priority. Hence, if an applicant is from a WTO member state, priority can be claimed within six months, provided that there is reciprocity.
In this regard, Article 20, Paragraph 1 of the Taiwan Trademark Law reads:
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 (WTO), may claim a right of priority, for the purposes 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.
Registrable trademarks in Taiwan
Since the amendments to the Trademark Law in 2012, TIPO now accepts – beyond standard word, design and symbol marks – 3D shapes, trade dress (packaging), colours, motions, holograms, sounds, combinations, slogans and special trademarks in the form of collective and certification marks. In addition, under Article 18, Paragraph 1, touch, taste and olfactory marks are also registrable.
Article 18 Paragraph 1 of the Trademark Law reads:
A trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof.
Unregistrable trademarks in Taiwan
Under Articles 29 and 30 of the Trademark Law, registration may be refused under certain conditions, including where the trademark:
- devoid of distinctiveness;
- is exclusively necessary for the goods or services to be functional;
- is identical or similar to state flags, armorial bearings, national seals or the emblem, mark, medal, official exhibition or certificate of a state or well-known institution;
- is identical to the portrait or name of Dr Sun Yat-Sen (the first president of the Republic of China) or the head of the state;
- is contrary to public policy or accepted principles of morality;
- is likely to cause confusion, mislead consumers or lead to trademark dilution;
- is identical or similar to a geographical indication for wines or spirits; or
- is intended to imitate.
Well-known trademarks in Taiwan
Even if it is unregistered, a well-known trademark (within the meaning of Article 6bis of the Paris Convention) will be protected and established as grounds for refusal of a trademark registration under Article 30, Paragraph1, Subparagraph 11 the Trademark Act.
A trademark must be widely recognised by a substantial proportion of the relevant enterprises or consumers in the relevant territory in order to be considered well known. This status is determined on a case-by-case basis by TIPO, which assesses factors such as:
- the strength of distinctiveness;
- the level of knowledge or recognition among the relevant enterprises or consumers;
- the duration, scope and geographical area of use;
- the duration, scope and geographical area of promotion;
- trademark application or registration, and the term, scope and geographical area of the trademark application or trademark registration;
- any record of successful enforcement of trademark rights, especially if recognised as a well-known trademark by the administrative or judicial system;
- the value of the trademark; and
- other factors for recognising a well-known trademark.