Protecting Your IPR in Taiwan: A Toolkit
Last Updated: June, 2010
- Coverage: What may be trademarked?
- Well-Known Trademarks and Trademark Priority
- Market Entry Planning
- PROTECT YOUR TRADEMARK
- HOW TO ADDRESS TRADEMARK INFRINGEMENT
- Frequently Asked Questions
- Additional Resources
Following World War II, political authority over Taiwan was transferred from the Japanese colonial regime to Chiang Kai Shek's Kuomintang Party. At this time, the Republic of China's 1930 Trademark Act became the official body of law concerning the protection of trademarks in Taiwan. In 1954, the National Bureau of Standards became Taiwan's official trademark authorization body. Amendments to the Trademark Act were infrequent until the 1980s and nineties, when Taiwan's economic base shifted from small electronics and textile production to high tech manufacturing. In 1999, Taiwan folded the National Bureau of Standards into the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs. Taiwan joined the WTO and made a commitment to comply with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) in 2002. In 2003, Taiwan amended its Trademark Act to further improve trademark protection.
U.S. companies seeking to enter the Taiwan market are advised to register their marks and/or logos with TIPO. In addition, any Chinese language translations and appropriate Internet domains should also be registered.
Unlike the U.S., Taiwan operates a "first to file" trademark examination and registration system. When two applications have been filed for similar or identical trademarks, the first application filed will be considered for approval. This does not apply to international "well-known" trademarks such as major brands with trademarks registered in other countries, although owners of well-known trademarks are strongly advised to register their marks in Taiwan.
The Trademark Act states that the following marks may be the subject of a trademark application: words, figures, symbols, colors, sounds, three-dimensional shapes or a combination thereof. Taiwan recognizes four types of trademarks according to purpose of use. Companies may register the following types of trademarks in Taiwan as defined under Article 5.
- Trademarks are used by the registrant to identify his/her own goods and services.
- Certification marks are described under Article 72 as "marks used to certify the characteristics, quality, precision, place of origin or other matters of another person's goods or services." For example, an "Idaho Potatoes" seal on a sack of potatoes indicates the place of origin of the product.
- Collective membership marks are used exclusively by a business association, social organization, or any other group to identify its organization or membership. They are not used to identify goods and services, but rather to identify the group itself or its members. For example, a political party could apply for a collective membership mark to identify its membership.
- Collective trademarks are marks or symbols used exclusively by a business association, social organization, or any other group to mark or identify the goods or services provided by its members and therefore distinguishing these goods or services from those provided by others. A woodworking association, for example, could use a collective trademark to identify products made by its members.
Articles 5 and 6 of the Trademark Act delineate the legal requirements for trademark distinctiveness and use.
Article 5 states that a trademark "shall be distinctive enough for relevant consumers of the goods or services to recognize it as identification of those goods or services and to differentiate such goods or services from those offered by others."
Article 6 explains "the use of a trademark connotes the utilization for marketing purposes of the trademark on goods, services, or relevant articles thereof, or the utilization through means of two-dimensional graphics, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark."
The Trademark Act states that the following symbols or marks are prohibited and may not be registered as trademarks. A complete listing may be found in Article 23.
- Symbols that fail to comply with the provisions of Article 5;
- Generic signs or terms used in relation to the designated goods or services;
- Symbols that are identical or similar to a well-known international organization or a well-known domestic or foreign institution;
- Symbols that are likely to mislead the public with respect to the nature, quality, or place of origin of the goods or services;
- Marks that comprise a portrait, a famous name, pseudonym or alias of another person;
Taiwan is not a signatory to most of the international conventions that provide for mutual trademark protection including the Berne Convention for the Protection of Literary and Artistic Works, the Madrid Agreement Concerning the International Registration of Marks, the Paris Convention for the Protection of Intellectual Property, or the Convention Establishing the World Intellectual Property Organization. Nonetheless, Taiwan provides priority registration to trademark holders of all WTO member states.
Taiwan's current Trademark Act protects well-known trademarks based on its "Main Points for Determining a Well-known Trademark or Mark" under Article 23-1(12). According to these requirements, a well-known trademark is defined as "one that has been well-recognized by the relevant businesses or consumers, for which objective evidence is shown."
Register your mark early! While the United States confers trademark rights upon the first party to use a trademark in commerce, Taiwan has established a "first-to-file" system that grants trademark rights to the party that first applies to register the trademark. To prevent others from using a similar mark, register your trademark as early as possible.
PROTECT YOUR TRADEMARK
Step 1: Select a Taiwan Trademark Agent
Under Taiwan's Trademark Act, a foreign company or individual who does not have a domicile or place of business in Taiwan must designate a trademark agent, usually a registered attorney, who is domiciled in Taiwan to represent them in the trademark application process. Foreign companies that have a branch office established in Taiwan and have been approved by the Taiwan Company Act are allowed to file applications themselves.
Trademark agents typically prepare the application, conduct pre-application trademark search, and submit the trademark application to TIPO. If a company is using a trademark agent to file the application, they must provide a power of attorney statement with a Chinese translation.
Step 2: Determine Whether the Mark is Eligible for Registration
A trademark agent or an attorney will be able to determine whether a trademark is eligible for registration under Taiwan law. For general information, refer to the "What may be trademarked?" section above. It is also necessary to perform a search of the Trademark Gazette to determine whether similar or identical trademarks have already been registered.
Step 3: Complete the Application Forms and Pay Application Fees
Complete the application forms and the power of attorney. Note that if a trademark agent is appointed, the application must be signed or sealed by the trademark agent.
Applications may be downloaded online from the TIPO website. Attach five copies depicting the trademark to be registered and provide two additional black and white copies if submitting an application for a colored trademark. Guidelines for color applications, sound trademark applications and three-dimensional trademark applications are available online. All requisite application fees must be submitted with the application.
Step 4: Select the Number of Classes
Taiwan uses the International Classification of Goods system, which categorizes commodities and services into 42 classes with sub-classes. A trademark must be registered in connection with at least one particular class of goods or services. It is often a good idea to register your mark in classes of products you may produce or sell in the future, or where there is room for consumer confusion.
Step 5: Perform a Pre-application Trademark Search
A preliminary trademark search is necessary to ensure that there is no prior conflicting registration. Taiwan keeps a public record of all registered trademarks that may be accessed online or through the Trademark Gazette. Note that trademarks that are "likely to cause confusion" among consumers may not be registered. In April 2004, Taiwan promulgated examination guidelines to clarify this concept.
Nationals of all WTO member states are allowed to claim trademark priority in Taiwan. To receive trademark priority status in Taiwan, all U.S. applicants must clearly state a claim to priority status within six months of the original filing date in the U.S. Any claim to priority status must be made at the time of filing the initial trademark application in Taiwan. Within three months of submitting their trademark application in Taiwan, applicants must also submit a certified copy of the application accepted by the U.S. Patent and Trademark Office in order to maintain a claim to priority status.
Step 7: Trademark Agent or Applicant Submits Application to TIPO Office
The filing date is the date on which the application was submitted to the TIPO office or the postmark date on which the application materials were mailed.
Step 8: TIPO Trademark Registrar Review
The Trademark Registrar will review the trademark application materials to ensure that they are complete and comply with the application requirements, and that the trademark meets the criteria for registration.
Step 9: Application Approval or Rejection of the Application
If the Trademark Office determines that the application packet is complete and no other similar or identical trademark has been previously registered, the Trademark Registrar will grant approval and register the trademark in the Trademark Gazette after receiving registration fees. The trademark is subject to public opposition for a period of three months.
If the Trademark Registrar decides to reject the application, it must notify the applicant in writing and state the reasons for rejection. Within thirty days of receipt of rejection notification, an applicant may seek an administrative appeal through TIPO. TIPO will then review the application and render a decision. If an applicant is dissatisfied with the appeal decision, it may file an administrative suit in the Taipei High Administrative Court.
Step 10: Pay Registration Fees
TIPO will not publish a trademark's registration until all requisite registration fees have been paid. Payments can be made 1) in a lump sum within two months of receipt of notification of trademark approval or 2) in two installments, the first payment due within two months and the second within three months of notification of trademark approval. If fees are not received on time, the original trademark approval will be cancelled. Fee schedules are available from TIPO.
Step 11: Publication of registered trademark
Upon receipt of registration fees, TIPO will publish the registered trademark in the Trademark Gazette. The trademark will remain registered for a term of ten years. To renew a trademark, applicants must file a request for renewal within six months before or after the trademark's expiration date. Note that a trademark must remain in use to maintain registered status. Article 57 of the Trademark Act states that a trademark that "has not been put into use or has been suspended from use continuously for three years after registration" shall be revoked.
HOW TO ADDRESS TRADEMARK INFRINGEMENT
The best weapon is prevention. Understand your rights before your product enters the Taiwan market. Use every legal means to mitigate risks from the start, including:
- Register your trademark in Taiwan.
- Develop and register a Chinese-language version, and do so throughout other jurisdictions of "Greater China" including the P.R.C., Hong Kong, Macao, and Singapore.
- Register your trademark in neighboring countries both for potential expansion and to block others from registering marks to use on products that consumers may confuse with yours.
- Conduct a survey to identify potential products infringing your trademark or products bearing a trademark confusingly similar to yours but registered by another party.
- Establish a corporate system for monitoring the marketplace for infringing products.
- Engage the services of a trademark agent or law firm to monitor the Trademark Gazette for registrations similar to your mark.
- Maintain your own registrations within your own company. Although many local distributors or business partners will suggest that they can handle the registrations themselves, past cases of companies giving local control of their trademarks to third parties has repeatedly led to unnecessary, expensive problems later.
- Centralize the ownership and management of your trademarks so as to help make the handling of key branding and registration issues as consistent as possible across relevant jurisdictions.
Taiwan law provides three approaches for disputing the validity of a registered trademark: opposition, invalidation, and revocation. Each approach stipulates a distinct purpose, filing period, and legal implications.
Opposition to an Approved Registration
If you discover that another company has registered a mark you believe would infringe on your company's trademark rights, your company may file an opposition in accordance with Article 46 of the Trademark Act. This must be done within three months of the mark's published registration in the Trademark Gazette. An opposition may be filed by interested parties or by the general public. A party filing an opposition must submit an application for opposition, processing fees, two copies of the evidence relevant to the opposition, and photocopies of documents attesting to the opposing party's identity. If appointing a trademark agent, a power of attorney must also be submitted with a Chinese translation.
Invalidation of a Registered Trademark
If a party determines that a registered trademark infringes on his or legal trademark rights he or she may file a request for invalidation of the trademark in question. Articles 50 and 51 of the Trademark Act delineate the procedures for filing an invalidation request. Invalidation requests must be filed within five years of the trademark's original publication date. Unlike requests for opposition, only interested parties may file requests for invalidation. A party filing an invalidation request must submit an application for invalidation including a statement of reasons for invalidation, processing fees, two copies of the evidence relevant to the request, and photocopies of documents demonstrating the requesting party's identity. If appointing a trademark agent, a power of attorney must also be submitted with a Chinese translation. A committee of three examiners will be appointed to review the request and determine whether invalidation is necessary.
A trademark may be revoked if it violates any of the conditions listed in Article 57. Anyone may submit an application for revocation to the TIPO office for review. A party filing a revocation request must submit an application for revocation including a statement of reasons for the request, processing fees, two copies of the evidence relevant to the revocation, and photocopies of documents demonstrating the requesting party's identity. If appointing a trademark agent, a power of attorney must also be submitted with a Chinese translation.
Articles 29 and 81 of the Trademark Act state that the following actions constitute trademark infringement.
- Using a mark identical to a registered trademark or collective trademark on the same goods or services;
- Using a mark identical to a registered trademark or collective trademark on similar goods or services, and hence causing likelihood of confusing or misleading consumers.
- Using a trademark that is similar to a registered trademark or collective trademark on the identical or similar goods or services, and hence causing likelihood of confusing or misleading relevant consumers.
- Knowingly using a trademark identical or similar to a well-known registered trademark of another person, or using the word(s) contained in the said well-known trademark as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence diluting the distinctiveness or reputation of the said well-known trademark; or
- Knowingly using the word(s) contained in a registered trademark of another person as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence causing confusion to relevant consumers of goods or services thereof.
Article 61 stipulates that if any of the above actions occurs without the prior consent of the trademark rights holder, the rights holder may claim damages from the infringer and may "request the destruction or other necessary disposal of the goods infringing trademark rights, or raw materials or equipment utilized for infringement."
To claim damages, the trademark rights holder should carefully evaluate the options available under Article 63. Depending on available evidence, claims may be determined by the profits the infringer received as a result of infringement, or by the profits lost by the trademark rights holder after the infringement occurred. A trademark rights holder may file a suit through the civil justice system or by reporting the case to the TIPO Anti-Counterfeiting Committee.
Trademark counterfeiters and sellers of counterfeit goods are also subject to criminal penalties. The maximum sentence for the manufacture or production of counterfeit goods is three years imprisonment and a fine of NT$200,000. Those who knowingly sell, display for sale, import, or export counterfeit goods are subject to a maximum sentence of one year imprisonment and a fine not to exceed NT$50,000.
When considering what type of suit to file, keep your company's end goals in mind. What is your ultimate objective? Is your end goal to stop the infringement, receive compensation, or both? What is at stake? What are the assets of the infringer? Is the infringer a large corporation or a small-scale illicit business? What legal resources are available to you in Taiwan?
A criminal approach is most effective when the end goal is to stop the infringement from recurring, and/or when the infringer's assets are not sufficient to warrant a civil case. On the other hand, a civil approach works best when the copyright holder's objective is to claim damages and the infringer has resources to make the litigation worthwhile. A final approach combines both criminal and civil charges. Supplementary civil complaints may be filed during the criminal proceedings. It is important to note that Taiwan does not charge court fees for criminal cases, whereas it does charge fees for civil cases. If a civil action is filed as a supplement to a criminal case, however, the court does not charge any additional fees.
Another agency that rights holders may approach to combat trademark infringement is the Taiwan Customs Authorities, Ministry of Finance.
Under Article 68, trademark rights holders who suspect infringement may apply for suspension of release of imported or exported goods through the Directorate General of Customs or the Customs Authorities at the relevant port.
To apply for suspension of release of goods, a trademark rights holder must provide the following information, as available, in their application. The following requirements are stipulated by Taiwan's Regulations for Customs Authorities to Suspend Goods Infringing on Trademark Rights:
- Facts of the infringement and descriptions that may identify the infringing goods
- Name of the importer/exporter suspected of committing the infringement
- Name of the ports and dates of suspected importation/exportation
- Suspected ship or flight numbers
- Suspected container numbers
- Suspected storage location of the infringing goods
- Trademark registration certificate or other proof of trademark rights
- Bond for the value of the goods detained
If Customs agrees to suspend release of goods, it will notify both the trademark rights holder and the owner of the detained goods. The trademark rights holder must initiate litigation within twelve days of notification by Customs.
Q: What must a foreign trademark holder do to become eligible for trademark protection in Taiwan?
Protection is not offered to a company that claims "first use" in Taiwan. Taiwan has a "first to file" system that grants trademark rights based on the time of application for a trademark. Trademark applications must be filed through the Taiwan Intellectual Property Office of the Ministry of Economic Affairs. See above for more details on application and registration.
Q: What is the duration of trademark protection in Taiwan?
A registered trademark is valid for ten years, calculated from the time at which the registration is published.
Q: Where should a trademark owner file a criminal complaint alleging trademark infringement?
Initially, a criminal complaint should be filed with the prosecutor covering the jurisdiction in which the alleged infringement occurred. The rights holder may then make a search and seizure request, which the prosecutor's office will in turn present to the District Court. If the judge approves, the police will be authorized to conduct a raid of the site of the alleged infringement.
Q: What are the criteria for criminal prosecution?
Anyone who knowingly sells, displays for sale, or manufactures trademark infringing goods may be subject to criminal prosecution.
Q: What are the maximum criminal sentences?
The maximum sentence for the manufacture or production of infringing goods is no more than three years imprisonment and a fine of NT$200,000. Those who knowingly sell, display for sale, import, or export counterfeit goods are subject to a maximum sentence of no more than one year imprisonment and a fine not to exceed NT$50,000.
Q: Is it possible to stop Customs from allowing the export or import of counterfeit goods?
Yes. Trademark rights holders who suspect infringement may apply for suspension of release of imported or exported goods through the Directorate General of Customs or the Customs Authorities at the relevant port.
Information on organizations, government agencies, and law firms handling IPR-related issues is available here.
Links to websites outside the U.S. government or the use of trade, firm, or corporation names are provided for the convenience of the user. Such links and/or use do not constitute official endorsement or approval by the U.S. government of any private sector or non-U.S. government website, product, or service.
The information provided above by no means constitutes legal advice and should not be a substitute for advice of counsel. Its intended purpose is to provide an overview of Taiwan's IPR environment, available enforcement mechanisms, and Taiwan offices sharing jurisdiction over IPR protection and enforcement. We recommend that U.S. companies seeking to do business in Taiwan or facing IPR infringement issues retain qualified U.S. and/or Taiwan legal counsel and pursue their rights through Taiwan's IPR enforcement regime.