TIPO announces changes to trademark registration practice

The Taiwan Intellectual Property Office (TIPO) has recently announced two key innovations to the IP system.

First, the TIPO stated that, if a trademark renewal application is filed more than six months before the expiration of the registration term, the application will be rejected.

According to the relevant provisions of the Trademark Act, an application for renewal of the term of trademark rights should be filed within six months before the expiration of the term, but in practice the TIPO has never strictly enforced this provision. However, to avoid disputes, any application filed on or after September 1 2010 that does not comply with the provision will not be accepted.

Second, Taiwan and China are now accepting each other's trademark priority claims. Since the Cross-Strait Agreement on IP Rights Protection and Cooperation took effect on September 12 2010, the competent authorities on both sides of the Taiwan Straits have worked to make the relevant adjustments to their internal operations. Consequently, since November 22 2010 Taiwan and China have accepted priority claims based on the same trademark application filed in the other country, provided that the basic application was filed on or after September 12 2010 (ie, the effective date of the agreement).

Therefore, if a trademark is first filed in China, the applicant can, within six months of the filing date of the Chinese application, file the corresponding trademark application with the TIPO claiming the filing date of the Chinese application as the priority date of the Taiwanese application, thereby enjoying priority over any applications filed in the interim by a third party for an identical or similar trademark. Similarly, if a trademark is first filed in Taiwan, the applicant is entitled to claim priority based on the Taiwanese application for its corresponding trademark application in China, provided that such application is filed within six months of the filing date of the Taiwanese application.

Jane Hui-Ching Chen, Lee and Li Attorneys at Law, Taipei

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