Trademark FAQ 2017-04-11T17:56:29+00:00

Trademark Application

A multi-class application is examined and granted on an all-or-nothing basis.  It generally takes more time before it is granted, not to mention that the Intellectual Property Office (IPO) has a backlog. To avoid delay or a total rejection, an applicant sometimes elects to divide the application for additional costs or abandon some problematic portions of goods or services. Occasionally, the IPO may at its discretion delete or amend some problematic portions and grant the application.
For a non-priority application, the only requirement is a Power of Attorney, no legalization or notarization required.  The Power of Attorney, if not filed initially, may be filed before a final deadline given by the IPO, e.g., one month.  To claim priority, an applicant is to claim priority at the outset and to file a priority document within 3 months from initial filing.  Information on use is not required, but may be requested by the IPO for an office action.  Commercial register excerpt, required under the old law, or statutory declaration is not required.
An original Power of Attorney must be filed.  Once a general Power of Attorney is filed, it may cover ongoing trademark applications or matters initiated at the IPO for the same client for approximately 3 years.
The term “absolute” or “relative” ground is not used.  A registrable sign is defined in its broadest sense to include visual, sound, motion and holographic signs that are inherently distinctive or have acquired distinctiveness through use.  A mark consisting only of 1 or 2 letters or numbers is not by itself non-registrable.  If these marks, however, are not in their normal non-designed forms, they may often be rejected for lack of distinctiveness.  Also, a sign having a functional feature is not registrable, and cannot resort to the rule of acquired distinctiveness.
A three dimensional mark is registrable, and there are quite some successful cases.  The IPO would usually require the applicant to show acquired distinctiveness before it allows the application.
Yes.  Conflict with an earlier right is often cited.

Any of the mentioned approaches would work.  Often, the applicant is left to file a response arguing against likelihood of confusion if none of the approaches are successfully pursued.

The opposition period starts from the day after registration of the mark for a 3-month period.

In a smooth case, an application would be granted leading to registration in about 7 to 12 months.  For an office action involving specification of goods or services, lack of distinctiveness or a prior right, the above period may be prolonged, and ensuing proceedings may follow.

Recordals in the TM Register

For an address change, the only requirement is to file an original Power of Attorney which includes the new address, no official fee required.

For a name change not involving an assignment, an original Power of Attorney which includes the new name is to be filed with a prescribed official fee.  Besides, it is required to file supporting documents showing the change, typically an excerpt of commercial or corporate registration records, no legalization or notarization required.

An assignment signed by both the assignor and the assignee is to be filed with a prescribed fee.  An original assignment document is not required, but may be requested when the IPO has a concern.  Complications may ensue where no assignment was signed and the assignor is no longer in legal existence.

Yes, it is possible to register a trademark license, including sub-license.  A non-registered license, exclusive or non-exclusive, is not valid against a third person.  For setting up good official records and/or protection of a licensee’s status as a licensee, registration of a license is recommendable.

A renewal request, along with a Power of Attorney, is to be filed within 6 months prior to the expiration of the 10-year registration, or within 6 months after the expiration (but subject to double payment of the official fee).  No further information or document, e.g., evidence of use, is required.

General TM Advice

In most cases, the IPO will hold that the two marks are similar, even if the identical word is of little or limited visual prominence.  Occasionally, the IPO is lenient if the identical word is commonly used in society or business, because the word is viewed as having weak strength (distinctiveness), especially where the subsequent mark consists of B, the second element.

This is basically considered the same as the preceding scenario, despite the difference of time sequence.  IPO leniency may occasionally be accorded, especially if the subsequent mark is B and A.

No, the trademark owner is to do just what is generally required of other types of litigation.  The court (the Intellectual Property Court here) does not require the owner to show use, just like some jurisdictions.  The court may, at its discretion, require a plaintiff to produce a notarized and legalized Power of Attorney where the plaintiff has no registered legal presence in Taiwan.  If a cease and desist letter is to be sent, the Fair Trade Law requires that such letters be not abusive.

(1) Examination of the specification (names) of goods and services is rigid and would cause a delay.

(2) Examination of the likelihood of confusion issue is predominantly based on similarity of trademarks, goods and services, with little attention to the real life market situation.  This would often lead to a rejection.

(3) Non-use cancellation is onerous to the party seeking cancellation.  The IPO requires an investigation report showing an on-site visit to a local trademark owner, and is often lenient as to the determination of use.