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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) |
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