Astron Intellectual Patent and Trademark Office

Trademark FAQs

Trademark FAQs

Purposes of Trademark Protection

"A trademark" is also known as a brand, and is used for identifying the specific source of goods or services provided. In order to avoid confusion, to protect the rights of a trademark right holder and the interests of consumers, to prevent any unfair competition and to facilitate the development of an industrial or commercial business, the Trademark Act clearly prescribes circumstances under which a party may not file a trademark application and prohibits any party from plagiarizing another party's registered trademark.(&1, Trademark Act)

Differences between Trademarks and Other Intellectual Property Rights

In addition to trademark rights, intellectual property rights also include patent rights, copyrights, trade secrets and integrated circuit layout. Patent rights are intended to promote and improve the technological development of national industries, while copyrights aim to foster the nation's culture. Both rights have a certain period of validity. On the other hand, trademark rights are deemed a kind of goodwill that is developed from the accumulation of long-term and continuous use. Trademark rights have no set term for expiration, as long as they are renewed and as the enterprise remains in business. Hence, trademark rights are highly regarded.  A trademark may be any sign consisting of a word, figure, symbol, color, sound, three-dimensional shape or any combination thereof, and is used in the competitive market for identifying the source of the goods or services. Unless trademark rights have been renounced by the right holder, or the mark has become a generic name for the industry or has lost its distinctiveness, the trademark rights can be used continuously through renewal. Copyrights mainly protect a creation within a literary, scientific, artistic, or other intellectual domain that is an independent distillation of the author's wisdom and techniques. Therefore, a creation must be original but not necessary unprecedented. Works include oral and literary, musical, drama, choreographic, artistic, photographic, audiovisual, and architectural works, and computer programs. In general, economic rights endure a term consisting of the life of the author and fifty years after the author's death. Patent protection is for the purpose of encouraging invention and creation so as to upgrade the industrial standards of the nation. A patent that is qualified for protection must be novel, advanced, practical and is applicable in the related industries. A patent is accorded to the patent holder for a definite period of time and emphasizes the result of research and development. Upon the expiration of the period granted to a patent, the technology related thereto will be in the public domain for the industry to use to benefit the masses.

What is a "trademark"?

A "trademark" is a sign that is used to distinguish one's goods or services from those provided by others. As the economy, culture, and the market diversify, the types of trademarks may now include a packaging design, three-dimensional object, sound, or even a scent. In the Republic of China, a trademark refers to a sign consisting of any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof. In addition, the minimum requirement of the trademark laws of every country is that a trademark must be recognizable to the general consumers as a trademark and is indicative of the source of the goods. Most generic names or direct or obvious descriptions of goods do not possess the characteristics of a trademark. (&5, Trademark Act¡^Legally, the registration of a trademark accords the right to eliminate other party's use of the same trademark or the right to license the same trademark to someone else. In addition to traditional trademarks labeled on the goods or their packaging and containers, trademarks may also include some special forms such as three-dimensional, color and sound trademarks.  Three-dimensional trademark: A three-dimensional trademark is a sign consisting of a three-dimensional shape formed in three-dimensional space, whereby consumers are capable of distinguishing the sources of different goods or services. For instance, if the shape of goods or the shape of their packaging or containers can identify the source of the goods, it can be registered as a three-dimensional trademark. Color trademark: A color trademark is a single color that is applied, in whole or in part, to the surface of goods or the container or to the place of business where services are provided. If a color itself can adequately identifies the source of goods or services, not in combination with a word, figure or symbol, it may be registrable as a color trademark. Sound trademark: A sound trademark is a sound that can adequately allow relevant consumers to identify the source of certain goods or services. For instance, a short advertising jingle, rhythm, sound of human speaking, peal, bell ringing, or the call of an animal can be registered as a sound trademark.

What is a "collective trademark"?

As the term suggests, a "collective trademark" is a brand commonly used by the members of a group. It could be a farmers' association, a fishermen's association, or other associations that are eligible for filing an application for registration of a collective trademark. All goods or services produced/manufactured or provided by the association members may label the collective trademark to distinguish those goods or services from goods or services produced/manufactured or provided by others. A collective trademark is intrinsically still a trademark. However, the major difference between a collective trademark and a trademark is that a collective trademark is used by the members of a group in connection with goods or services, while a trademark is used by the registrant for identifying his/her own goods or services. (&76, Trademark Act)

What is a "collective membership mark"?

A collective membership mark identifies the organization or membership of a business association, social organization, or any other group that exists as a juristic person; that is, a collective membership mark is a general membership mark. The Lions Club, the Rotary Club, and a political party are all eligible for filing an application to register a collective membership mark for identifying their organizations or memberships. A collective membership mark has no direct relationship with business activities related to goods or services, as it simply identifies the organization of the group itself or the membership of its members and will be displayed on relevant articles or documents, while a collective trademark identifies the goods or services provided by the members of the group using the trademark. They are different intrinsically. (&74¡F&75, Trademark Act)

What is a "certification mark"?

A certification trademark is a sign used to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, e.g., the Taiwan fine product sign, UL electrical appliances safety sign, ST toy safety sign, and 100% wool sign, which are familiar to the average Taiwanese consumers. An applicant of a certification mark must be a juristic person, group or government agency that is capable of certifying an entity's goods or services. The use of a certification mark shall mean that the right holder of a certification mark, in order to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, agrees to the person for displaying the certification mark on articles or documents in connection with the goods or services. (&72¡F&73, Trademark Act)

How to file a trademark application?

In filing a trademark application, an application form should be prepared, and the filing date is the date when the relevant documents are received by TIPO or the postmarked date. No delivery of the application via facsimile is allowed. In addition, the application shall be accompanied by the following documentations: Application specifying the name and address of the applicant, the proposed trademark, the class of the designated goods/services and the names of the goods/services; Clear trademark representations; Government fees; In case a trademark agent is appointed, the Power of Attorney (if in a foreign language, a Chinese translation is required); The application must be signed or sealed. If a trademark agent is appointed, the application may be signed or sealed by the trademark agent only.

Is there a standard form for trademark applications? Where can one obtain the application form?

The application form can be downloaded free of charge from TIPO's website (at http://www.tipo.gov.tw/trademark/trademark_table.asp), or can be purchased at the Counter located on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to the account "the Intellectual Property Office of the Ministry of Economic Affairs. Applications are divided into four different categories, namely, trademark, collective trademark, certification mark, collective membership mark, with each having the following types of application forms: general trademark application color trademark application sound trademark application three-dimensional trademark application.

Who is eligible for filing a trademark application?

Generally speaking, any domestic or foreign natural person, juristic person or business entities (business establishments or firms) who use trademark to identify the goods or services they offer in trade, may file a trademark application in the name of an individual, juristic person or business entity, except for collective trademarks, collective membership marks and certification marks, which are subject to the following rules: The applicant of a collective trademark or collective membership mark is restricted to business associations, social organizations, or groups that exist as a juristic person. In filing an application, the applicant must submit the certificate of incorporation proving that the applicant has been registered and filed with the competent authority and has completed its recordation as a juristic person with a court, and the regulations governing the use of the collective trademark or collective membership mark, specifying membership qualifications and the regulations controlling the use of the collective trademark or collective membership mark. (&39, Trademarks Regulations¡^ The applicant of a certification mark is restricted to juristic persons, groups or government agencies who are capable of certifying another party's goods or services. In filing an application, the applicant must submit documents specifying the qualifications or capability to issue the certification, requirements for labeling the certification mark, the rules governing the use of the certification mark, and a declaration stating that the applicant does not engage in the manufacturing and marketing of the goods to be certified or provision of the services to be certified. (&38, Trademarks Regulations)

Can a trademark application be filed by a company that is undergoing incorporation?

Yes. In practice, a company undergoing incorporation is the predecessor of the company to be incorporated. They are deemed the same entity. However, the particulars of registration shall be submitted after the incorporation of the company has been registered. (&91, Trademark Act)

Is it required to appoint a trademark agent for filing a trademark application?

A trademark application may be filed either by a trademark agent or by the applicant himself/herself. The general public may prepare and submit a trademark application, but the application must comply with the requirements set forth in the Trademark Act. In the event that any assistance is needed, please consult the Trademark Information Desk of TIPO, tel: (02)23767570. However, no selection or appointment of trademark agents is provided. (&8, Trademark Act¡^If a trademark agent is appointed, the trademark agent shall be notified of all procedures related to trademark application and further submissions or corrections to perfect the application. A foreigner who has no domicile or place of business within the territory of the Republic of China (ROC) must designate a trademark agent who has a domicile in the ROC for handling trademark matters. However, a foreign company that has been approved under the Company Act of the ROC and has set up a branch office is not required to appoint a trademark agent since it can give the place of business in ROC and its representative.

Can a Taiwanese general agent of foreign trademarked goods apply for registration of the foreign trademark concerned?

A trademark is used for identifying goods that one produces or for which one acts as an agent, and a general agent promotes and publicizes the goods it selects or sells in the ROC. With the consent of the original trademark right holder, the general agent may apply for registration of the foreign trademark in its own name. However, if it is agreed that the general agent is authorized to market the goods only, without consent from the original trademark right holder, the general agent may not apply for registration of the foreign trademark in its own name, but instead, the application shall be filed in the name of the foreign merchant or manufacturer.

Tips for designing a trademark to ensure its registration

A trademark is granted protection only after it has been registered. The owner of an unregistered trademark cannot prohibit another party from plagiarizing. Sometimes, the use of an unregistered trademark may infringe upon another party's trademark rights. In order to acquire registration, the design of a trademark should observe the following points: Do not use the descriptive wording or device of goods as a trademark. The Trademark Act prohibits a trademark registration application to contain the name, shape, quality, function or other descriptions of goods themselves, since the description of goods can be freely used by anyone in the industry, if one single party monopolizes its, it will violates the principle of fair competition. Hence, the design of a trademark should be devoid of any description that is simply descriptive of the goods. For example, "§JÁ­" (cockroach killer) for insecticides and "" (clean) for laundry detergents are deemed descriptions of goods. Conversely, the use of "¡±JÁ­" (cockroach preventer) and "¤@°ÍÆF" (one spoon effective) for the goods are not routinely or actually used by the industries, nor do the terms directly describe the goods. Do not use a trademark that is identical or similar to another person's registered trademark designated for the same or similar goods. To avoid having identical or similar design to someone else's registered trademark, a search for similar trademarks should be done before proceeding to design a trademark. TIPO has a trademark search system on the Internet. The public may search for relevant information by accessing TIPO's website at http://www.tipo.gov.tw/.Do not use another party's well-known trademark as one's own trademark. The Trademark Act clearly forbids the registration of any trademark that is identical or similar to a well-known trademark. The protection of a well-known trademark does not depend on the prerequisite that the well-known trademark has to be registered in the ROC. Instead, protection is granted as long as the well-known trademark is recognized commonly by the domestic consumers. Moreover, the protection thereof is not confined to goods identical or similar to those covered by the well-known trademark, but extends to dissimilar goods. Therefore, the public must not think that they can plagiarize, use or deliberately register a well-known trademark that has not been registered in the ROC. In violation of the above, the right holder of the well-known trademark who suffers damages from the violation may request to terminate the use or request to cancel the trademark registration.  Do not use a trademark containing any word or figure that will easily cause consumers to misidentify the contents, nature, quality, or place of origin of the goods. In other words, the use of any word or figure that will mislead or deceive consumers is prohibited in the Trademark Act. For instance, "¡ÂQçx" (black ginseng) for chicken will cause the public to misidentify the goods as containing ginseng; the use of "¬õ¼Ð" (red label), which was first used on rice wine by Taiwan Tobacco and Wine Company, for medicated liquor will cause the public to believe that it is rice wine or contains rice wine as an ingredient. If the applicant is a producer of dairy products in Hsiangshan District of Hsinchu but uses "ªì³À" (Chu-Lu, a city in Taitung) on fresh milk products, the public may misidentify the products as being produced in Chu-Lu, Taitung, and misidentify the place of origin. All of the above examples are prohibited under the Trademark Act.

Can different people file applications for registration of an identical trademark for different goods or services?

Yes. Most countries recognize that where goods or services applying an identical trademark or similar trademarks are unlikely to cause confusion in the market and will not cause unfair competition, they may be registered or used by different people or business entities. In general, if the use of trademarks that are not well-known or are not of high originality for dissimilar goods by different manufacturers, they are unlikely to confuse consumers about the source of goods, thus may be filed separately.

Can different people acquire the registration of an identical trademark in different countries?

The Trademark Act is a territory-based law, and the protection of a registered trademark is made on the territory basis. Hence, it is possible for different people to acquire the registration of an identical trademark in different countries. If a manufacturer considers any global factor with respect to the operation and marketing strategies of its trademarked goods/services, it has to seek for international protection by filing applications in the countries where its goods/services are provided.

How to disclaim the exclusive use of a trademark?

Any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof contained in a trademark shall be distinctive enough to allow a relevant consumer to identify the trade source of certain goods/services of a certain manufacturer or merchant and to distinguish such goods or services, and thus, is deemed to have distinctiveness. After a trademark is registered, the trademark right holder thereof enjoys the right to exclusively use the same and exclude the use by others. Therefore, a trademark as a whole must be distinctive. In case a trademark contains any descriptive or non-distinctive word or figure, the applicant may declare that such portion (word or figure) is not for exclusive use apart from the trademark to avoid being rejected, since that portion may arouse disputes over the right to use that portion exclusively after the trademark is registered. The applicant may make a disclaimer of exclusive use if any of the following conditions apply: (&19, Trademark Act¡^The trademark contains descriptive or non-distinctive word or figure; Deletion of part of the wording or figure from the trademark will make the trademark incomplete; and The applicant declares that the right to exclusive use of such portion shall not be made apart from the entire trademark.

Can a trademark application be assigned to another person? What steps need to be taken if the applicant's company name or its organization changes?

Yes. After an application for registration of a trademark has been filed, rights derived from a trademark application may be assigned to another person. However, the assignee shall submit the agreement or document showing a signed or sealed consent of the assignment by other parties. If changes only involve the change of the business entity (i.e., having the same identity or unified taxation code), or change of the legal status from a " limited company" to a "limited joint stock company," an application for change before trademark approval shall be filed under 5.13 herein accompanied by a photocopy of ID card, business license or Profit-seeking Enterprise Registration Certificate. (&20; &22, Trademark Act)

Is there a grace period for paying the 2nd installment of the registration fee if the payment is not made in time due to negligence?

If the second installment is not made within three months prior to the expiration of the third year, a late fee in the same amount as the original's is charged, and the total amount must be made within six months upon the expiration of the said period. For instance, if the registration fee for a trademark whose registration is published on January 1, 2004 is to be paid in installments, the second installment of registration fee shall be made between October 1, 2006 and December 31, 2006 (NT$1,500 for each class). If payment is not paid in time, a late fee in the same amount as the original's, in addition to the registration fee (total NT$3,000 for each class) shall be paid by June 30, 2007.

Can a fee-refund application be filed if the trademark registration is cancelled due to an opposition or invalidation action?

The registration fee for a trademark is paid by the trademark right holder for the continuous claim of the trademark rights. Except for incorrect payment or overpayment, no refund application may be filed from the cancellation of the trademark registration that is a result of violation to the law.

How to calculate the term of trademark rights. Is there any difference for the term of trademark rights if the registration fee is paid in installments?

The term of trademark rights is ten years from the date of publication of the trademark registration, which shall remain the same even if the registration fee is paid in installments. It should, however, be noted that if the second installment is not paid (see 7.2, 7.3), such trademark right will be invalidated the day following the three years and six months period from the date when the trademark registration is published. For example, if the second installment for a trademark whose registration is published on January 1, 2004 is not made, the trademark rights thereto will be invalidated at 00:00 on July 1, 2007.

Can a single application amend the registration particulars of multiple trademarks or marks?

Yes. If the same trademark right holder wishes to amend the registration particulars of two or more trademark simultaneously, he/she need only file one application to change the particulars with the following documents:(&32 III, Trademark Act¡^Application: the applicant may download the application form from the website at http://www.tipo.gov.tw/trademark/921128/10-2 application for change of registered particulars, or purchase the application form in person at the Counter located on the 3rd floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs".  Government fee: depending on the number of registered trademarks to be changed, NT$500 per trademark. Documentation proving the change (such as a photocopy of ID card, business license or Profit-seeking Enterprise Registration Certificate, seal). If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

What steps need to be taken if individually owned trademark rights and the recordation of ownership of the registered trademark changes from the individual to a business entity or firm that the individual owns?

Since a business entity or firm is not entitled to any right by law, the rights to a trademark thus belong to the natural person who owns the business entity or firm. Under such circumstances, the ownership of the trademark does not change. Thus, it is not necessary to record the assignment, but instead, an application for recordation of the change of registered particulars shall be filed pursuant to 7.6.

Is it necessary to apply for recordation of assignment or ownership change if a trademark was originally registered in the name of the responsible person of a business entity or firm and thereafter the responsible person changes?

A trademark registered by a business entity or firm belongs to the natural person who owns the business entity or firm. If the responsible person of a business entity or firm changes, even if the name of the business entity or firm remains unchanged, an application for recordation of the assignment shall be filed because of change of ownership.

What should be noted after a trademark has been granted registration?

After acquiring the rights to a trademark, the registrant shall, in particular, note the following matters:(1) renewal of the term of exclusive use; (2) obligation to continuously use the trademark; (3) recordation of licensed use; (4) prohibition of change or additional notes to the trademark, whereby the trademark is made similar to another person's trademark.  Please bear in mind that registration renewal shall be filed prior to the expiration of the term of exclusive use thereof.  The term of trademark rights is ten years. Renewal application shall be filed prior to its expiration and each renewal is limited to ten years. In the case of failure to apply for renewal by the expiration of the term, the trademark rights shall be invalidated the day following the expiration of the term of trademark rights. For instance, in the case that no renewal application is filed for a trademark whose registration is published on January 1, 2004, the trademark rights will become invalid at 00:00 on January 1, 2015. (&33 Trademarks Regulations) Continuous use of the trademark.  The lawful acquisition of trademark rights after the registration of the trademark not only means the acquisition of the rights to exclusively use the registered trademark, but also eliminates another person from using an identical or similar trademark(s) on the same or similar goods. If a trademark right holder does not actively use his/her registered trademark, not only the goodwill related thereto cannot be accumulated, but also it will hinder others' opportunity to enter the market. The occurrence of the above will contravene the purpose of trademark protection. If a trademark has not been used or has been continuously suspended from use for three years after its registration, the registration of the trademark shall be revoked. (&57 I, Trademark Act) Recordation of licensed use.  Due to operational concepts, the trademark rights may be licensed to another party, in whole or in part. Unrecorded licensing may not be set up as a defense against any third party. Please use the trademark as it is registered and do not use the trademark with any change or additional notes thereon. Prohibition of change or additional notes to a trademark mainly avoids improper use of the trademark. That is to say, the clause is to prevent the situation in which a trademark is not used in accordance with the trademark as registered, but instead, the trademark in use is with any change or additional wording or device, thus making the trademark insinuating another person's goods or causing the public to misidentify the trademark as other's. If the rights and interests of the right holder of another trademark are thereby affected in practice, the registration of the said trademark shall be revoked by law.

How to use a trademark correctly

Correct use of a trademark is the basis to maintaining the protection of the trademark. The use of a trademark shall suffice to allow consumers to identify the source of certain goods or services. The trademark should not be used as a generic name or description of goods if such usage will result in the loss of the distinctiveness of the trademark.  Trademark labeling in a distinctive form.  Trademark labeling is different from the description of goods or a decorative pattern, but instead, shall suffice to allow consumers to recognize it as an identifier for distinguishing the goods or services it represents from those provided by others. This is to prevent consumers from considering it as a general mark, name, shape, or other descriptions of those goods or services. The trademark in use shall be the entire trademark as registered.  The registration of a trademark invests the holder with the right to exclude another party's use of the same or similar goods in respect of the same or similar trademark. Therefore, the entirety of a registered trademark shall be used and no division shall be made. Otherwise, the registration may be revoked because the registered trademark has not been put into use. Do not make any change or additional notes to a registered trademark such that the trademark may be misidentified as another party's.  Through the publication of a registered trademark, a third party is able to know the contents of the trademark and avoids making the same design or infringe upon the trademark. Thus, a trademark right holder shall use the trademark as it was registered, and shall not make any changes or additional notes thereon. If the use of a registered trademark insinuates another party's goods such that confusion is likely to occur, the registration of the trademark may be revoked. If so, the original trademark right holder shall not be eligible, within three years from the date of revocation, to register or to be assigned or licensed to use another trademark identical or similar to the originally registered trademark. (&57 I and &59IV, Trademark Act) The use of a trademark shall avoid insinuating anything or any improper behavior that may cause the public to misidentify the goods or services with respect to their nature, quality or place of origin and thus, consumers may misidentify or mis-purchase the goods or services. In the case of occurrence, the registration of the trademark may be revoked thereby. (&57 I, Trademark Act)

Under what circumstances would a trademark be deemed in use?

The use of a trademark means that the trademark right holder uses the registered trademark for identifying the source of the goods/services it represents. Objectively, the manner of use shall adequately allow consumers to recognize the trademark and to distinguish the goods/services from those offered by others. The manner of use may refer to the following: (&6, Trademark Act) Labeling a two-dimensional graphic on goods or their packaging or containers or on stickers, manuals, price lists, or product catalogues or other articles such as business articles or documents in connection with services to be provided (including paper napkins, name cards and price lists of restaurants), or using a two-dimensional graphic in connection with newspaper, periodical and magazine advertisements. Promoting the goods or services offered under a certain trademark through digital audio-video or electronic media such as TV, radio, electronic signboard, TV wall, electromagnetic recording or Internet. Other media that may identify the source of goods/services, for example, posters on the externals of buses and moving publicity vehicles.

Can an application for trademark renewal be filed upon the expiration of the term of trademark rights?

Yes. If a trademark right holder needs to use the registered trademark continuously, he/she may file an application for renewing the term of trademark rights six months before the expiration of the term. A term of ten years shall be provided for each successful renewal, and the term of renewal as approved shall commence from the date following the expiration of the last trademark term. If the trademark right holder applies for renewal of the registered trademark to part of the designated goods or services, he/she shall delete the names of the goods or services that are not intended for renewal. For instance, if the designated goods originally include "Chinese medicines, western medicines and sanitary and medical supplements," the goods "Chinese medicines" shall be deleted therefore if only the goods "western medicines, sanitary and medical supplements" are intended for renewal. However, if it is desired to amend the goods "sanitary and medical supplements" to "iced pillows, eyeshades and ear plugs," an application to reduce the designated goods shall be filed separately, and the recordation of change of the goods shall follow the procedure specified in 7.6. (&27 and &28, Trademark Act)

What are the remedies for when an application for renewal of trademark rights fails to be made within the prescribed period?

To prevent forfeiture of trademark rights from failing to apply for renewal, a trademark right holder is still entitled to file an application for renewal six months after the expiration of the term of trademark rights; however, the registration fee shall double. In other words, if the government fee for filing a renewal application for a trademark or collective trademark is NT$4,000 per class and NT$4000 per application for a collective membership mark or certification mark, the fee for renewing a trademark or a collective trademark would be NT$8,000 per class, and NT$8,000 per application for a collective membership mark or certification mark, if the renewal application is filed six months after the expiration of the term of trademark rights.

How to apply for renewal of the term of trademark rights

In applying for renewal of the term of trademark rights, an application shall be submitted. The renewal application may be filed for the whole or part of the designated goods or services. In addition, the renewal of trademark registration no longer adopts the examination system, and is completed after the application is filed and the registration fee is made.  Application: the applicant may download the application form from the website at http://www.tipo.gov.tw/trademark/trademark_table_expand.asp), or purchase the application form in person at the Counter on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs". Government fee: NT$4,000 per class for trademarks or collective trademarks; NT$4,000 per application for collective membership marks or certification marks. In the case that the information of the trademark right holder changes, documentation proving the change (such as a photocopy of a certificate showing change of the company's name, address, responsible person or seal, business license or Profit-seeking Enterprise Registration Certificate). If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

When shall an application for recordation of trademark assignment be filed?

The assignment of trademark rights takes effect upon the conclusion of the assignment agreement stating the parties' unanimity, provided that the assignment of trademark rights shall have no locus standi against any third party if the assignment is not recorded with TIPO. Therefore, after being assigned a trademark, the assignee shall immediately apply with TIPO for recordation of the assignment. The prevailing Trademark Act has no associated trademark registration system. Thus, before being assigned trademark rights, a party shall particularly note if any identical or similar trademark is concurrently assigned and if the trademark to be assigned is prohibited from disposal or is involved with disputes, so as to protect his/her rights and interests. For an application for recordation of assignment, please refer to the application requirements on the Internet at http://www.tipo.gov.tw/trademark/921128/note/11 guidelines on applications for assignment recordation. The application should be submitted with the following documents: (&35; &30, Trademarks Regulations) Application: the applicant may download the application form from the website at http://www.tipo.gov.tw/trademark/921128/11 application of assignment recordation.doc, or purchase the application form in person at the Counter located on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs". Government fee: NT$2,000 per application. A photocopy of the assignment agreement or other documents proving the assignment or certificates showing that a court has confirmed the auction of the trademark. If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

What steps need to be taken when an heir wishes to record the trademark assignment at the death of the trademark right holder?

Does the trademark right remain valid if the trademark right holder dies heirless?  Trademark rights are regarded as intangible properties. If a trademark right holder is a natural person, the trademark rights are succeeded by his/her heir when the trademark right holder dies. If the trademark right holder died without an heir, the trademark rights terminate. As trademark rights are meant to identify the same source, when the trademark right holder died, an application for assignment recordation filed by the assignee shall be accompanied by the following documents in addition to the materials specified in 8.3.1: (&39, Trademark Act) documents attesting the trademark ownership; certificate of death of the original trademark holder; a full transcript of household register (the applicant shall provide a undertaking stating it is the full transcript of the household register); a letter of consent on succession (http//www.tipo.gov.tw/trademark/921128/note/11 guidelines on application for assignment recordation.doc standard form) If the heir is a minor, a letter of consent from the legal guardian.

How to file an application for recordation of trademark license

A trademark right holder may license another person to use his/her trademark on part or whole of the goods or services for which the trademark is registered, and may license to different people at the same time or at different times. One license is not limited to one person only. License takes effect upon the conclusion of the license agreement stating the parties' unanimity, provided that the license shall have no locus standi against any third party if the assignment is not recorded.  Either a trademark right holder or a licensee may apply for recordation of trademark license. If the license recordation is filed by a licensee, the license agreement or the excerpted license agreement signed or sealed by both parties, or other certificates sufficiently proving the license shall be submitted. (&33, the Trademark Act; &29, Trademarks Regulations) Application¡Gspecifying the licensee, the registration number of the trademark to be licensed, the term of license, and the class(es) and names of goods to be licensed (the applicant may download the application form from the website at http://www.tipo.gov.tw/trademark/921128/13 application of license recordation.doc, or purchase the application form in person at the Counter located on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs". Government fee: NT$2,000 per application. The license agreement, or the excerpted license agreement or other certificates (in the case of foreign companies, a Chinese translation shall also be submitted; in the case that the applicant is the trademark right holder, certificate of license may be exempted.) If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

How to abandon trademark rights

If, in view of the operation status and the specific needs of an enterprise, a trademark right holder no longer needs to use the trademark concerned, he/she may notify TIPO in writing, stating the intent to abandon the rights. If so, the trademark rights terminate on the date when such notification reached TIPO. However, where license or pledge recordation has been made, the abandonment of trademark rights become effective only with consent from the licensee or pledgee. (&38, Trademark Act)

Astron Intellectual Patent and Trademark Office

Astron Intellectual Patent and Trademark Office

   Home     Professional Services     Application forms     Law & Regulations     FAQ in Taiwan     Contact Us  

Tel: +886-2-26028488 Fax: +886-2-26024188

Astron Intellectual Patent and Trademark Office © Taiwan Inc. All Rights Reserved