Updates on trademark law in Taiwan

Safeguarding trademarks presents real challenges amid the pandemic, with massive shifts to online trading, difficulties getting cases to court and physical enforcement challenges to name a few. As policymakers and regulators rush To adapt, many Asian jurisdictions have rejuvenated their regimes to protect valuable IP and the public interest

Trademark protection is obtained through registration, and Taiwan follows the first-to-file system. The following types of marks are registrable: Trademarks (for both goods and services); collective marks; certification marks; and collective trademarks (for both goods and services).

All distinctive signs are registrable as a trademark. In addition, the Examination Guidelines on Non-traditional Trademarks, published by the Taiwan Intellectual Property Office (TIPO), states that smells, patterns and positions are also registrable as a trademark, and tactile and gustatory signs are only registrable as a trademark exceptionally.

Registration proceedings

Applications are filed at the TIPO, and multiple-class applications are possible. Foreign applicants without domicile or business offices in Taiwan are required to apply through a local agent. However, a legalised and/or notarised power of attorney is not required, and foreign applicants do not need a domestic company or domicile registration.

The application process includes a formal examination, examination of absolute grounds (e.g. distinctiveness) and examination of relative grounds (e.g. likelihood of confusion). Signs without innate distinctiveness can be registered if distinctiveness has been acquired through use.

Opposition against trademark. The opposition period is three months from the publication date of the trademark registration.

Duration. Trademark registration is valid for 10 years from the publication date of the registration, and renewable for another 10 years.

Grace period. A trademark may be renewed within six months preceding the expiry date. The grace period for trademark renewal is six months from the expiry date of the registration. After the expiry of the grace period, the trademark registration will automatically lapse.

A lapsed mark cannot be restored. However, if the owner failed to comply with the grace period for renewal due to an act of God, or any cause not attributable to the owner, he/she may apply for restoration within 30 days from the day following the date on which the cause vanishes. However, no application for restoration may be made beyond one year after the failure to comply with the grace period for renewal.

A lapsed trademark may be re-registered in the name of a third party at any time, if the renewal application is not filed within the grace period.

Use requirements

If a trademark has not been used for three years from the publication date of the registration, or has not been used later for a continuous period of three years without a justifiable cause, the TIPO may ex officio, or at the request of a third party, cancel the trademark registration.

The party alleging non-use of a trademark needs to provide prima facie evidence on petitioning for the cancellation of the trademark registration, while the trademark owner bears the burden of proving trademark use after the cancellation proceeding is initiated. In addition, the party alleging non-use of a trademark is not required to prove a legitimate interest for the cancellation of the trademark.

Use is only required to be done in Taiwan. Trademark use as referred to in the Trademark Act means the use of a trademark for marketing purposes in any of the following situations to enable the relevant consumers to recognise it as a source-identifier:

. Applying for a trademark on goods or the packaging of goods;

. Possessing, displaying, selling, exporting or importing the above-mentioned goods;

. Applying for a trademark on articles relating to services provided; and

. Applying for a trademark on commercial documents or advertisements relating to goods or services.

. Use of a mark on digital video or audio, electronic media, the internet or other media also constitutes use of the trademark. Use must not necessarily have been continuous. Sporadic, intermittent or one-off use will suffice. To use a similar or related trademark will not necessarily suffice.

. Use of a mark in a form different from the form in which it is registered constitutes use of the trademark only if merely minor changes have been made, and the changes do not alter the distinctive parts of the trademark.

. Use of the mark in a different form does not constitute use in the event that:

. A coloured trademark is changed to black and white;

. The colours of a coloured trademark are changed; and

. Only a part of a trademark has been used.

Licence agreement

In Taiwan, a licence agreement may be concluded in writing or orally. It is permitted to license an unregistered trademark. A registered trademark may be licensed for all or part of the designated goods or services. A licence may be exclusive or non-exclusive.

If a registered trademark is assigned after the licence has been entered in the register, the assignee is still bound by the licence agreement. The sale of a registered trademark does not automatically terminate the licence if the licence of the registered trademark is entered in the register. The Trademark Act provides for the following:

. If a trademark is assigned subsequent to the recordal of a trademark licence, the assignee shall be bound by the licence agreement;

. An exclusive licensee has the right to exclude the trademark owner and any third party from the use of the licensed trademark;

. An exclusive licensee has the right to sublicense the trademark; and

. A trademark owner may abandon his/her rights. However, if a licence or a pledge has been entered in the register, the trademark owner shall obtain the consent of the licensee or the pledgee.

There are provisions in the Trademark Act for the recordal of a trademark licence, which is voluntary, but becomes effective against third parties only after it is recorded at the TIPO. The recordal must be applied for before the expiration of the trademark registration. The licence period may exceed the registration period.

In this case, if the trademark registration is renewed within the renewal deadline, the licence does not need to be recorded again, and if the trademark registration is not renewed within the renewal deadline, the licence recordal will lapse with the lapse of the registration. However, the licence agreement for the unregistered trademark will still be effective between the licensor and the licensee.

There are no statutory provisions prescribing the form and/or content of a licence agreement. A request to record a trademark licence in the register shall be made by the trademark owner or the licensee by filing a written request specifying the following:

. The name, address of domicile or business establishment, nationality or locality of the trademark owner and the licensee and, if any, the name of the representative;

. If any, the name and address of the domicile or business establishment
of the agent;

. The registration number of the trademark;

. Whether the licence is exclusive or non-exclusive;

. The date when the licence took effect and, if any, will be terminated;

. Where the licence is for part of the designated goods or services, the list of such goods or services and the classes; and

. Where the licence is for a particular locality, and the name of that locality.

The licence agreement determines when the licence becomes effective. The licence becomes enforceable against third parties on the date when the licence recordal is published in the official gazette. An unrecorded licence is not required to be published.

There is an evidentiary presumption that the trademark use of a recorded licensee is a legal use. A non-exclusive licensee may not join the trademark owner’s infringement proceedings unless the trademark owner petitions the court for third-party participation.

The Trademark Act provides that an exclusive licensee has the right to initiate infringement proceedings in its own name unless the licence agreement provides otherwise. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings.

Deep & Far Attorneys-at-Law’

13/F, 27 Sec. 3, Chung San N Rd,

Taipei 104, Taiwan, ROC

Contact details

Tel: +886 2 2585 6688

Email: email@deepnfar.com.tw

www.deepnfar.com.tw