May 12, 2023 (Newsletter Issue 5/23)Accelerated Examination AvailableThe partial draft amendment to the Taiwan Trademark Act has passed the third reading on May 9, 2023 by the Legislative Yuan1. Several provisions favorable to trademark holders are introduced in the amendment, which are summarized as follows:
Introducing Accelerated Examination for Applications for Trademark Registration
The new Paragraph 8, Article 19 of the Trademark Act, introduces accelerated examination for trademark applications if applicants need to quickly obtain the right (e.g., when there is infringement litigation involved or when products have launched). Applicants may submit facts and reasons for acceleration, pay a NTD 6,000 fee, and have the examination period shortened to 2 months.
Introducing Trademark Agent Management System
The introduction of a system for managing trademark agents allows those equipped with professional knowledge of trademarks and who have completed registration and training to handle trademark matters as trademark agents.
Stipulating Circumstances that are Nominative Fair Use and Not Infringement
“Using others’ trademark to refer to others’ goods or services, in a manner that is honest and conforms to business transaction practices, to indicate the purpose of one’s own goods or services” is considered “nominative fair use” and not infringement (Paragraph 1, Article 36).
For instance, a mobile phone repair shop using a sign that shows the trademarks of various mobile phone brands to indicate the services it provides does not constitute trademark infringement.
Simplifying Customs Detention Process
The amended Paragraph 2, Article 75 of the Trademark Act obviates the need for trademark holders to identify the infringement at customs in person when an article is deemed likely to infringe the trademark holder’s right. As long as the trademark holder has completed the registration for “advice protection of trademark right” at the Taiwan Customs, once an article suspected of infringement is found, the trademark holder may then determine whether there is infringement based on the photos of the article on the customs’ online platform.
More Amendments to Come
In addition, the IPO proposed another set of partial draft amendment to the Taiwan Trademark Act stipulating matters regarding the examination of opposition and invalidation and processes of remedies thereof, trademark exhaustion, and requirements for registering trademarks with functionality, etc.
Read more here.
Source: www.tipo.gov Mar 23, 2023 (Newsletter Issue 4/23)Japan-Taiwan Concordance List of Similar Group Codes PublishedThe Japan Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to the Nice Classification, 12th edition, version 2023 (NCL12-2023).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
To access the concordance list, please click hereSource: www.jpo.go.jp Jan 12, 2023 (Newsletter Issue 1/23)Online Certificates for Patents and Trademarks The Taiwanese Intellectual Property Office (TIPO) has announced that it will issue online certificates for patents and trademarks from January 2023. The online certificates will be provided in PDF format and can be downloaded by the applicant within six months of notification by TIPO. The certificates are equipped with anti-counterfeiting measures that require verification, digital signatures, and a QR code.
Online certificates are not mandatory. Applicants may choose either an online or a paper certificate. Also, should the applicant require a paper certificate later, those who have opted for an online certificate can request a paper copy.
For more information, please see hereSource: www.tipo.gov.tw Nov 17, 2022 (Newsletter Issue 16/22)Examination Guidelines on Certification Marks/Collective Membership Marks/Collective TrademarkOn 1 October 2022, the amendments of the Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks became effective. The Taiwan Trademark Office (TIPO) informs about the main revisions:
I. The name of the Guidelines changed to “Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks” to reflect the sequence of the provisions.
II. A separate chapter on “Geographical Marks” has been added to promote and explain the registration process for the application of geographical certification marks and geographical collective trademarks.
III. Regarding the applicant’s declaration that he/she does not own a business that is involved in the manufacturing and marketing of goods or provision of services of the kind being certified:
i. Clear stipulations forbidding the applicant from registering a trademark in the same scope of the product or services being certified. Otherwise, the applicant is considered in violation of impartiality and the terms of the declaration.
ii. The applicant may, given that he/she fulfills the other requirements, apply to register another trademark outside of the scope of the product or services being certified.
IV. The use of the certified mark should clearly indicate the name of the products or services being certified:
i. When applying for a certification mark, the applicant is permitted to list the overarching category in the name of the product or service being certified (e.g., food, electronics, etc.). However, TIPO requires that the names of products and services abide by NICE classification and be included as an annex in the regulations governing the use of certification marks for ease of publication.
ii. The names of products or services listed for “products or services being certified” should match what is listed in the regulations governing the use of the certified mark and the application and shall not extend beyond the scope listed therein.
V. Examples to illustrate the principles by which to determine what constitutes “obviously improper” – a term used in Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act – with regards to the registration of certification marks, collective membership marks, and collective trademarks.
VI. Additional case studies are added based on supplementing the content for ease of understanding.
For more information, please click here Source: www.tipo.gov.tw Sep 22, 2022 (Newsletter Issue 13/22)
New Exam Guidelines on TM Distinctiveness
On 1 September 2022, new guidelines came into effect on examination of trademark distinctiveness.
Therein, TIPO has provided examples for various types of trademarks and ensured that the basis on which distinction is determined for trademarks aligns with current market transactions.
Main revisions are as follows:
- Adaptations to the different compositional patterns of foreign alphabets; providing reference examples for determining whether descriptions are designed and distinctive.
- Addition of assessment criteria and example explanations for “alphanumeric combinations” and “numbers” in response to differences in use between various industries.
- Addition of the following categories with examples: “popular graphics”, “purely informational graphics”, and “commercial design graphics.”
- Addition of criteria for country names, geographical images, and geographical names used in descriptions of product origin, as well as misleading use or misrepresentation thereof for product origin.
- Addition of criteria for determining the name and portraits of well-known public figures who are recently deceased; provided criteria to assess whether it constitutes use of “portraits” of other persons; provided examples for reference.
- Addition of determining criteria for religious images and terms; added examination principles for marks related to traditional and cultural activities.
- Revision of criteria for slogans, common words, new terms, and technical terms, and adjusted the examination guidelines for “idioms.”
- Trademark graphics which include “the full name of the company” or “domain names” are considered strictly informational to prevent affecting the certainty of the scope of trademark rights and the function of correctly indicating the source of the product or service in the event that trademark rights are transferred or there is a change of name after registration.
Source: www.tipo.gov.tw
Mar 31, 2022 (Newsletter Issue 4/22)
Online Trademark Registration System Updated
On February 15, 2022, the Taiwan Trademark Office (TIPO) updated the online trademark registration process and interface to improve usability. Three forms are now available for traditional trademark applications, amendments, and withdrawals.
In addition, TIPO plans to add colour, sound, and 3-D trademark applications, as well as divisional applications and applications for change prior to registration in the third and fourth quarters of 2022. Furthermore, the Office plans to include collective trademarks, certification marks, and collective membership marks as well.
Source: www.tipo.gov.tw
Mar 31, 2022 (Newsletter Issue 4/22)Draft Amendments to Trademark and Copyright Act ApprovedOn January 20, 2022, Taiwan's Cabinet approved draft amendments to the Trademark Act and Copyright Act to provide better protection for intellectual property right owners. The submission of these amendments by the TIPO is a necessary step for joining the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) trade pact.
The draft amendments would allow prosecutors to investigate a broader range of copyright or trademark infringement cases. For example, the draft amendments to the Trademark Act remove the word "knowingly" from the current law, meaning that even unintentional and negligent infringement can be considered infringement.
For further information, please click hereSource: www.moea.gov.tw Feb 24, 2022 (Newsletter Issue 3/22)Japan-Taiwan Concordance List of Similar Group Codes PublishedThe Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
For information please check JPO's website hereSource: www.jpo.go.jp Feb 10, 2022 (Newsletter Issue 2/22)
Changes to List of Designated Goods and Services for TM Registration
In response to the latest version of Nice Classification NCL (11-2022), the Taiwan Intellectual Property Office (TIPO) has amended its own list of Names of Designated Goods and Services for Trademark Registration, effective January 1, 2022. The changes include 45 revisions and 556 additions. As for amends done to class/subclass names or notes, there are 4 additions, 18 revisions, and 8 removals.
Those who use the electronic trademark application system after January 1, 2022, are advised to download the updated list featuring all incorporated changes.
Source: www.tipo.gov.tw
Jan 27, 2022 (Newsletter Issue 1/22)Examination Criteria on Likelihood of Confusion RevisedThe Taiwan Trademark Office (TIPO) has revised the Examination Criteria on Likelihood of Confusion to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. In doing so, TIPO has referred to the examination guidelines of the EUIPO, the JPO, the USPTO, and the judicial practice of Taiwan. The amended entered into force on October 27, 2021.
The revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
An additional criterion, “channels of distribution or points of sale,” was included in the list of determining factors for the degree of similarities between goods and services. Several determining factors were modified, for example, whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy for example.
For more information, please check hereSource: www.tipo.gov.tw Jun 03, 2021 (Newsletter Issue 11/21)Trademark Use Not Limited to Use in TradeThe Supreme Administrative Court (SAC) clarified in a judgment in 2020 that use of a trademark as stipulated in the Trademark Act is not limited to profit-making commercial transactions.
According to Article 5 of the Trademark Act, "use of a trademark" means any of the following act, "in the course of trade", where such trademark is capable of being recognized by relevant consumers as a trademark:
1. to apply a trademark to goods or packaging or containers thereof;
2. to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
3. to apply a trademark to articles relating to the provision of services; or
4. to apply a trademark to commercial documents or advertisements relating to goods or services.
The SAC pointed out that the Trademark Act only requires that use should be "in the course of trade" which is not limited to profit-making business transactions. The use of trademarks registered by non-profit organisations, e.g., Harvard University, National Taiwan University and Tzu Chi Foundation, are examples of applicable use.
Source: Deep & Far, Taiwan and Lee and Li Attorneys at Law, Taiwan Feb 25, 2021 (Newsletter Issue 4/21)Japan-Taiwan Concordance List of Similar Group Codes PublishedOn January 25, 2021, the Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2021 (NCL11-2021).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
The concordance list is available as PDF list and as Excel table
More information can be seen on JPO's website hereSource: www.jpo.go.jp Apr 30, 2020 (Newsletter Issue 6/20)
Updated Taiwan-Japan Concordance of Similar Group Codes Released
In conjunction with the modification to the 11th Edition-Version 2020 of the Nice Classification made by WIPO, the Taiwan Trademark Office (TIPO) renewed the Taiwan-Japan Concordance List of Similar Group Codes corresponding to the Nice Classification, 11th edition, version 2020 (NCL11-2020), as a reference for Taiwanese and Japanese trademark registration applicants to utilize this list when searching for currently registered trademarks.
Source: www.tipo.gov.tw
Apr 02, 2020 (Newsletter Issue 5/20)Fast Track Trademark Examination System SoonThe Taiwan Intellectual Property Office (IPO) introduces a new fast track trademark examination system to enable accelerated trademark examination process. Starting from May 1, 2020, any new trademark application which satisfies the following requirements shall automatically be subject to fast track examination. The examination period will be reduced by about 2 months and the fast track examination does not require a separate application or official fee.
Requirements for fast track examination:
1. Electronic filing shall be used;
2. Only traditional trademark shall be included;
3. All descriptions of goods or services shall be identical to the standard descriptions in the PO recommended terms of designated goods or services
4. Specific electronic methods of official fee payment shall be used;
5. If an attorney is appointed, the Power of Attorney shall be submitted together with the application
For more information, please under IP updates hereSource: www.wisdomlaw.com.tw Dec 13, 2018 (Newsletter Issue 21/18)Examination Guidelines on Procedural Examination of Applications for TM Registration PublishedThe Taiwan Trademark Office (TIPO) published the Examination Guidelines on Procedural Examination of Applications for Trademark Registration on October 19, 2018.
The Guidelines comprise a total of 15 chapters containing information on filing and withdrawal of applications, filing fees, trademark application form and filing date, priority right and exhibition priority right, etc.
The Guidelines aim at understanding the procedural requirements for the filing of a trademark application, ensuring a broader protection of the rights and interests of applicants and increasing efficiency in the examination of trade mark applications.
TIPO encourages making use of the Guidelines. For more information, please check hereSource: www.tipo.gov.tw Aug 30, 2016 (Newsletter Issue 15/16)
TIPO’s Names and Search Reference Revised
Taiwan Trademark Office announced that there have been changes made in the names and search reference for designated use of goods and services in applications for trademark registration. A total of 64 revisions, 6 deletions, and 17 additional revisions to names or notes on groupings were made. This was done to stay current with the Nice Classification (NSL 10-2016). These changes took effect on July 1, 2016.
The e-filing system were simultaneously updated. TIPO advises e-filers to download the changes to avoid inconsistency.
Source: www.tipo.gov.tw
Nov 25, 2015 (Newsletter Issue 18/15)
Notice on Trademark Dispute Examination Procedures
The Taiwan Trademark Office (TIPO) announced on its website the “Notice on Trademark Dispute Examination Procedures” in order to accelerate the examination process of trademark dispute cases. TIPO stipulated the Notice to improve the examination procedures based on the situations commonly seen to delay the process in real practices.
The improvement measures include directly entering into the substantive examination phase ex officio without going through the procedure of Cross-examination and hearing. The Notice comprises matters relating to shortened examination time and effective management.
The related information was posted onto TIPO’s website on September 1, 2015.
Source: www.tipo.gov.tw
Sep 29, 2015 (Newsletter Issue 15/15)
Trademark Related Regulations Amended
The Taiwan Trademark Office announced on its website that the Article 11 of Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means has been amended on July 13, 2015 to comply with deletion of Article 4.2 of Enforcement Rules of the Trademark Act requiring that the applicant be exempted from submitting the original copy of proof for rights of priority and exhibition priority. What follows is the text of the amended Article 11.
Article 11
The documents of proof to be submitted in an electronic trademark application may be replaced with the electronic version thereof prescribed by the Registrar Office, except for the original, the certified copy, or evidence submitted pursuant to the Act or the Enforcement Rules of the Act.
For the documents of proof submitted in electronic form pursuant to Paragraph 1, preliminary showing shall be made that the electronic files are identical to the original or the certified copy.
Whenever it deems necessary, the Registrar Office may require the user to submit the original or the certified copy of the electronic files prescribed under Paragraph 1 for verification.
Source: www.tipo.gov.tw
Jul 17, 2012 (Newsletter Issue 11/12)
New Trademark Act Effective
Taiwan’s newly amended Trademark Act entered into force on July 1st 2012, a year after the promulgation date.
The new Trademark Act, among other things, enlarges the scope of protectable subject matter to allow all forms of sensory signs that are distinctive enough to identify goods or services from others to be registered as a trademark. Some forms of non-traditional symbols are exemplified in the trademark law, such as colours, three-dimensional shapes, motions, holograms and sound, but such examples are not exhaustive.
Under the recently published Examination Guidelines for Non-traditional Trademarks, a position mark that highlights a certain drawing, colour or three-dimensional symbol on a particular position of a product or location of a service provider may also be registered. Designs or decorations of a business location and product packaging are categorized as the same type of a three-dimensional shape, and will be examined under the same distinctiveness standard for trademarks. In addition, scent, taste and texture that bring a certain sensation to consumers are also taken into consideration under the Examination Guidelines.
Source: Tsai Lee & Chen, Taiwan
May 15, 2012 (Newsletter Issue 8/12)Amended Trademark Act Soon EffectiveThe Taiwan Trademark Office announce that the amendment to the Trademark Act will be effective on July 1, 2012. The amendment was promulgated on June 29, 2011.
Key points of the amendment are:
- Scope of protectable trademarks is extended: Protection to more non-traditional marks, such as motion and hologram marks
- Modes of trademark use are specified: Online trademark use
- Accepting priority rights based on exhibition
- Installment payment for registration fee is abolished
- Reinstatement of registration is available after failure to pay registration fee in time
- A letter of consent is no longer guaranteed to prevent citation of conflicting prior rights
- Proof of use of a trademark will be required to support a cancellation action based on a prior trademark registration
- New provisions have been added to enhance protection against trademark infringement and to strengthen enforcement of border control measures
For further information on the amendments, please click here
Source: Lee and Li, Attorneys-at-Law, Taipei, Taiwan,
Baker & McKenzie Taipei, Taiwan Apr 02, 2011 (Newsletter Issue 6/11)
Early Renewal Application Rejected
The Taiwan Intellectual Property Office (TIPO) has 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 1st, 2010 that does not comply with the provision will not be accepted.
Source: Lee and Li Attorneys at Law, Taiwan
Mar 01, 2011 (Newsletter Issue 4/11)Cross-Strait (Taiwan & China) IPR Agreement SignedSince November 22nd, 2010, the trademark authorities of China and Taiwan have accepted trademark applications claiming priority based on a corresponding application filed on the other side of the Taiwan strait.
For further information please click here
Source: AFD China Intellectual Property, Beijing, China
Feb 24, 2011 (Newsletter Issue 3/11)Free Online DatabaseThe Taiwan Intellectual Property Office (TIPO) has made the online search database of similar trademarks available free of charge to the public effective of January 1st, 2011.
To access the the database (Chinese version) please click here Feb 01, 2011 (Newsletter Issue 2/11)Official Fees ChangedThe Taiwan Intellectual Property Office (TIPO) has changed its official fees for trademark applications effective from February 1st, 2011.
For more information on the amended fees please click here Legal basis is the Trademark Act, last amendment on May 24, 2023 and effective date shall be determined by the Executive Yuan.
Trademark protection is obtained through registration.
Taiwan follows the first-to-file system.
Nice classification, 12th edition
In addition, there are national subclasses.
Registrable as a trademark are all distinctive signs, such as words (names, acronyms, letters, characters, numbers) devices, symbols, colours, three-dimensional shapes, motions, holograms, sounds or any combination of the mentioned signs. In addition, according to the “Examination Guidelines on Non-traditional Trademarks”, smells, patterns and positions are also registrable as a trademark, and tactile and gustatory signs are only registrable as a trademark exceptionally.
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).
The application is filed at the Intellectual Property Office.
Multiple-class applications are possible.
Foreign applicants who have no domicile or business office in Taiwan need a local agent.
A legalised and/or notarised power of attorney is not required.
Foreign applicants do not need a domestic company/domicile registration.
The application process includes 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.
The processing time from filing to registration or the first office action is approx. 8 months.
Trademark registrations will be published in an official gazette.
National:
The opposition period is 3 months from the publication date of the trademark registration.
A trademark registration is valid for 10 years from the publication date of the registration.
The trademark registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereAs for trademarks and collective trademarks, the official filing fee for the goods in Classes 1-34 is NTD3,000 per class, plus NTD200 per item from the 21st item of designated goods for each class.
The official filing fee for the services in Classes 35-45 is NTD3,000 per class; however, for the retail services of specific goods in Class 35, there will be NTD500 per item from the 6th item of designated retail services of specific goods.
The official filing fee for a collective mark or certification mark is NTD5,000 per application.
When filing for trademark registration in electronic format, the filing fee will be reduced by NTD300 per application. If using the standard names of goods or services, the filing fee will be further reduced by NTD300 for each class.
The official registration fee for all types of marks is NTD2,500 per class. Payment in installments is not permissible.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
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Jun 28, 2023
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