Common FAQ
Trademark FAQ
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Can a foreign company apply for a trademark registration in the name of their affiliate in Taiwan, R.O.C.?
No, the trademark application should be filed in the name of the head office because an affiliate does not possess an independent legal entity and could not be the subject of rights and obligations. However, it is not necessary for the foreign company to appoint an agent to deal with trademark matters if the foreign company obtains a certificate of recognition from the government of Taiwan, R.O.C. and completes the procedure for branch office registration, and the applicant’s address could be filled in with the address of the branch in the territory of Taiwan, R.O.C. (The Company Act, §4, §371) -
Can a company in the process of establishment apply for a trademark registration in the name of their provisional office?
Yes, the company that in the process of establishment could apply for a trademark registration because it could be deemed as the predecessor of the corporation. However, it is still required to submit the information of the company incorporation registration and change the applicant’s name after its corporation. -
Can general agents in Taiwan apply for a trademark registration with the trademark owned by the original equipment manufacturers?
Trademark is the sign used to identify commercial source of product. The general agents could apply for a trademark registration in their own name to promote and publicize their products if they obtain the approval from the original equipment manufacturers. On the contrary, the trademark registration should be registered under the name of the original equipment manufacturers rather than general agents if general agents were only appointed to selling the products and not obtaining the approval from the original equipment manufacturers. -
Is it applicable to register a trademark consists of more than one logo to save the filing fee?
Registrant is required to use a trademark which is identical with the registered pattern in relation to the designated goods or services. If the registered trademark is the combination of various designs, then it must not be represented in separated part to avoid the risk of being revoked. (Trademark Act. §35. I, §63. I) -
What are the differences of filing trademark in black-and-white and color form?
If a trade mark is registered in single color or black-and-white form, actual use of the mark in a different color without changing the major distinguished feature would not affect the validity of the trade mark. On the contrary, if a trademark is registered in combination of more than two colors (color trademark), and the color plays dominant role in identification of the mark, the use of the mark in a different color scheme is highly possible to give consumers different impression in regards to identify the commercial source of products and services. -
What is a priority claim?
An applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with Taiwan R.O.C., or filed such application with a member of the World Trade Organization (WTO), may claim a right of priority, for the purposes of registering the same trademark in Taiwan R.O.C., for some or all the same goods or services, within six months from the day following the date of filing of the first such application.
If an application is filed with a claim of priority, the date of priority shall count as the date of filing. (Trademark Act. §20. I, VI) -
Can the electronic priority document downloaded from the website of competent authority of the country or the organization be regarded as “original document”?
The electronic priority document downloaded from the website of competent authority of the country or the organization can be regarded as “original document”. In order to verify the consistency of the applying trademark, it is required to submit the document printed in color. Such service is currently available on the website of Office for Harmonization in the Internet Market (OHIM). -
Is it possible to add goods/services to a trademark after being registered?
No amendments can be made to the designated goods/services after a trademark registration has been filed, even if the extended goods/services belongs to the similar group of the registered designated goods/services. However, restriction is allowed. (Trademark Act. §23) -
What are the non-substantial amendments prescribed by the Trademark Act?
In order to prevent applicant alters the protection scope after the filing of trademark registration and affect the rights and interest of others, applicant shall not change the content of trademark after the filing date, unless the amendment would not substantially change the nature of the registration as shown in the following example: deletion of an element devoid of distinctiveness or likely to
mislead the public as to the nature, quality, or place of origin of the
goods or services; deletion of a particular pertaining to the weight or ingredients of goods, phone or address of agents or dealers, or any other purely informational matter; deletion of the internationally used symbol for a trademark or a trademark registration (the letter R enclosed within a circle), etc. (Enforcement Rules of the Trademark Act. §24) -
Is the trademark type changeable after filing?
The amendment to the type of trademark may be possible if the statement of mistake with objective evidence from applicant to prove the foregoing facts, and such amendment would not change the nature of trademark.
For example, a three-dimension trademark registered in two-dimension by mistake, the correction may be made if the applicant submit specimen of actual use as objective evidence to prove that the trademark should be registered as three-dimension trademark. -
What are the correctable errors of registered trademark?
Errors that deemed as “obvious” may be correctable without proof; including errors in the name or address of the applicant or errors of wording or of copying. Errors that cannot be defined as “obvious”, the Registrar Office may require, if necessary, the applicant to furnish relevant proof. Content of the correction shall not affect the original representation of the trademark or broaden the scope of the designated goods or services. (Trademark Act. §25, II)
(Enforcement Rules of the Trademark Act. §26) -
What impact does disclaimer have on the trademark right?
Disclaimer is only the precaution for avoiding potential infringement in the examination for registration. A registrant obtains the exclusive right to use the overall trademark with designated goods/services after registered, rather than the right of particular portion. When identifying likelihood of confusion, the trademark should be reviewed as a whole, while the part with less distinctiveness, no matter with or without disclaimer, would merely be given less attention or ignored. Whether or not likelihood of confusion will be caused and the trademark rights could be exercised as a whole should be reviewed case by case. -
Will the filing of a Coexistence Agreement be able to overcome a likelihood of confusion refusal issued by the Examiner?
The consent document would still have to be examined by the Examiner to determine if there is any obvious improperness on the likelihood of confusion before being accepted by the Examiner. -
Is OEM business considered as an act of the use of the mark as prescribed in Article 5 of Trademark Act?
In accordance with Article 5 of Trademark Act, the use of a trademark must be in line with provision of “in the course of trade”. In the light of the above, the manufacturer engaged by the foreign trademark proprietor to manufacture products labeled with trademark or brand to be exported back to the foreign states does not attend to the purpose of domestic market. Thus OEM business should not be deemed as the use of trademark (Taiwan High Court Kaohsiung Branch Court, Criminal Division 1995 Zai Zi No. 4). However, if the manufacturer manufacture excessed number of engaged products and conduct marketing activity in the domestic market, such behavior shall comply with the principle of the use of trademark, therefore should not be performed without the consent of the proprietor.
