Trademark Filing in Taiwan
A Trademark registered in India will not protect your trademark in a foreign country. Trademarks are territorial and its protection is valid only within the borders of the territory/country where the trademark has obtained registration. Therefore, Trademarks are valid only in the country where it has been recorded and therefore, it is to be understood that filing of trademark in one country does not makes it valid worldwide by default.
Below is the procedure for filing Trademark in Taiwan:
Trademark matters in Taiwan are handled through the Taiwan Intellectual Property Office (English) (TIPO), which is part of the Ministry of Economic Affairs in the Executive Yuan.
The documents required for filing the trademark application are：
• Application stating the name and the address of the applicant.
• A specimen of the applicants mark.
• The class of the designated goods/services and the names of the goods/services.
• Clear trademark representations.
• In case a trademark agent is appointed, the Power of Attorney is also required (if in a foreign language, a Chinese translation is required). The POA must be signed or sealed.
Step 1: Searching for the mark
The 1st step for Registering Trademark in Taiwan is to SEARCH (same as that of India) and the search can be made for checking the availability of Trademark in Taiwan on the official portal of Intellectual Property Corporation of Taiwan (website: https://twtmsearch.tipo.gov.tw).
Step 2: Class selection and completing the application
Trademark classes are commonly referred to as classification of goods and services. It is a standard way to describe and organize the types of goods and services to which the marks apply. Also the Nice Classification of Goods and Services is an international standard which is adopted by the 148 countries. Although Taiwan is not a signatory to the international trademark treaties, But Taiwan is a member of the World Trade Organization (WTO), and it follows the Nice Classification system. Once you determine which classes(s) to file your trademark under, you are ready to complete the application.
Step 3: Information required to file the application
• Applicant name.
• Is your trademark in color or monochrome?
• The main picture of your logo.
• Short explanation of the trademark -You do not need to fill out this section – it isn’t necessary.
• Prior date of claim.
• If you have applied to register your trademark in another country, you can claim the application date on the date of the international application submission, up to six months before your actual Taiwan submission date.
• Applicant national category.
• There are three categories: Taiwan citizen, China citizen, and foreign. If you are registering as a foreign applicant, then you will also need to include your nationality.
• Applicant legal category.
• The three categories are: Legal person, organization, and factory. Depending on your selection, you will have to provide further information.
• ID information and Taiwan address.
• If you are filing as a foreign applicant, you need a passport which will be your ID.
• Contact information.
• Including phone number, email address, etc.
• Agent information.
Step 4: Examinations and clarifications
Once the application is accepted by TIPO the further procedural and subsequent examinations will be conducted. Generally, The TIPO application takes between 8-10 months after submissions to registration. If TIPO has any questions or concerns about your application they will contact the attorney to seek more clarification.
Step 5: Approval
When TIPO sends notification that your trademark has been approved for registration they also send a bill for NT$2,500 (~$90 USD). You must take the bill to a specific branch of a particular bank to pay the fee.
Once your trademark is filed and published, you will receive a certificate declaring that the trademark is registered to you or your company.
Step 6: Registration, Publication and Opposition
After 1-2 months when you pay the registration fees, TIPO will issue the formal notice of registration. Thereafter, your trademark is registered and is valid for 10 years from the date of publication and it can be extend for a subsequent 10 year period by filing renewal. Taiwan Intellectual Property Organisation publishes all new trademark registrations, similar to the trademark gazette published by the U.S. Patent & Trademark Office, with a three month period to file an opposition to the registration of the trademark. The protection period is valid for 10 years from the filing date. A renewal application can be filed within 90 days before the expiry of an additional period of ten years from the date of expiration of the original registration, or from the date of the last renewal of registration.
Note: - In Taiwan if you do not use your trademark in commerce for a period of three years your mark may be cancelled.
Step 7: Appealing a rejection pre-notice
There is always a chance that TIPO will decide your trademark is either:
1. Too similar to another registered trademark, or
2. Too general to be trademarked
If they decide either of these things, before they formally reject your application, thus forcing you to begin all over again, they will most likely send you a “rejection pre-notice”.
The pre-notice will state why the trademark has been rejected, as well as an explanation that you can appeal the decision. In order to appeal, you need to do the following:
• First, go back to the search tool and look for trademarks similar to yours. You are looking for anything that has been successfully registered that would prove yours should also be eligible for registration.
• Next, document any proof you have that you have been using your logo and that it is clearly associated with your product, service, or brand. Take photos of times you have used your logo, and show proof of things like sponsorships or events you have sponsored, prior usage, events where it has been displayed, and how long you have been using it. You can also provide evidence regarding how many people have seen it. If your logo is on a YouTube channel and the video or channel has thousands of views, this sort of evidence could sway the decision in your favor.
Citing this evidence, write a letter outlining why your trademark should be registered. Once you have
collected evidence as to why you should get the trademark, re-submit it either by mail, personal delivery,
or through the e-filing system.
The trademark will be approved by this stage. But if they rather still reject your application, there is further remedy available.
After the rejection, you can file an administrative appeal to TIPO. Further, TIPO will forward the administrative appeal to the Petitions and Appeals Committee of the Ministry of Economic Affairs and the committee members will review the case.