Zoomlaw Attorneys-at-Law - Taiwan
Foreign entities in Taiwan are required to appoint a representative for many legal procedures. For trademark applications, it is common to appoint a trademark agent. Although this can be anyone, for safer and broader coverage it is recommended to use a specialised law firm that will spearhead a company’s entry to the Asia market.
The following application documents are required for foreign entities:
- a trademark registration application form (name, nationality and address of the applicant);
- a power of attorney (simple signature – no notarisation required);
- a reproduction of the trademark (drawings of 5cm to 8cm by 5cm to 8cm);
- a list of designated goods or services (description and Nice Classification); and
- special certificates and other necessary documents (eg, priority documents and origin certificates) translated into Chinese.
A document showing proof of use is not required for a Taiwanese trademark application or renewal. Although documentation is not required, it is useful to remember that a trademark that is not used for three consecutive years may be subject to a non-use cancellation by an interested third party or ex officio.
The time from trademark application date to publication of the registration can be from eight to 12 months. However, if there are office actions, oppositions or postponements due to other legitimate reasons, it may surpass the 12-month threshold. In reality, the Taiwan Intellectual Property Office (TIPO) trademark review time varies with each case and the workload of the specific Nice class examiner. Now, TIPO has launched a fast-track mechanism which, through its e-filing system, will speed up examination time and is two months faster than the regular track.
The first step is the formal examination to verify whether the application documents and materials are in order (ie, if the application content is sufficient and clear and the submission of documentary evidence or related procedures is complete). If there is a need to modify or supplement the application, the TIPO will issue a revision notice with two months to respond.
Next, a substantial examination for the statutory registration requirements takes place, comprising absolute grounds (ie, not fraudulent or illegal) and relative grounds (ie, constituent elements and existence of prior conflicts). Here, the TIPO’s trademark database is used to search for identical or similar trademarks that are already registered, approved or previously applied for in similar categories of goods and services. The application will be rejected if the examiner finds a similar designation according to the TIPO’s distinctiveness guidelines. Hence, to prevent negative results and save time, it is advisable to conduct a prior trademark search and consult trademark professionals.
If no issues are found, an approval certificate will be given to the applicant, who has to pay the licence fee within two months. After payment, the trademark registration is published and a three-month announcement period for opposition starts. If no oppositions are filed in this time, then a trademark registration remains valid.
Trademark oppositions cannot be filed at the application stage as Taiwan has a post-registration opposition system. Anyone can oppose an application through a written pleading and defence procedure. The facts and grounds of an opposition may be the same as the aforementioned absolute and relative grounds in the TIPO’s substantial examination. However, lack of distinctiveness, which may cause confusion and misunderstanding among consumers, is generally the main reason for an opposition.
TIPO decisions on the substantial examination or the opposition, invalidation or revocation of a trademark registration can be administratively appealed within 30 days before the Ministry of Economic Affairs. The ministry’s decision can then be appealed to the IP Court, followed by the Supreme Administrative Court, as Figure 1 demonstrates.