Information of Joint Trademark Applications (Amended on June 26, 2006)
2006/06/26 Taiwan- If two or more applicants would like to jointly obtain a trademark right and register a trademark according to the Trademark Law Article 2, the application shall be signed by each of the joint owners, and one of the applicants shall be appointed as the representative (the person who receives official notifications from the IPO). If the representative has not been appointed, the IPO will consider the first person listed on the application form as the representative who is responsible for delivering the official notifications to the other applicants.
- The consent by each of the applicants is required to proceed with the assignment of a joint trademark application, the assignment of joint trademark rights, license or a creation of a pledge. Nevertheless, the aforementioned does not apply to those who obtain rights due to inheritance or auction.
- Assignment of a joint trademark application, assignment of joint trademark rights, license or a creation of a pledge shall be entered and recorded by the Registrar Office. An unrecorded entry shall have no locus standi against any third party.
- Assignment of joint owners’ positions: If one of the joint owners assigns his/her joint rights to a third person, it is necessary for all the joint owners to file and sign the application of assignment together. However, if the application of assignment is filed by one of the joint owners, a letter of consent by all the other joint owners needs to be attached to the application. Nevertheless, the aforementioned does not apply to those who obtain rights due to inheritance or auction.
- With reference to the assignment of joint ownership, other joint owners have the priority to obtain the assigned ownership.
- A request for reduction of the items of the goods or services designated: According to the Trademark Law Article 20 & 32, the joint applicants and joint owners who request for reduction of items of designated goods or services need to obtain the consent from all the other joint applicants and joint owners.
- Applying for division of designated goods or services: According to the Trademark Law Article 21 & 31, the joint applicants and joint owners who apply for division of designated goods or services need to obtain the consent from all the other joint applicants and joint owners.
- Abandonment of joint trademark rights:
- Joint owner who abandon their joint trademark rights should obtain the consent from the other joint owners, which shall be made in writing to the Registrar Office. The trademark rights are extinguished as the written agreement is forwarded to The Registrar Office. However, one who has recorded a licensing or pledge and wishes to do so shall have consent from the licensee(s) or pledgee(s).
- One of the joint owners abandoning his/her joint trademark rights, which the abandoned trademark rights are possessed by the other joint owners, should file a recordal of assignment of trademark rights.
- Application to change the particulars of a joint trademark application or a joint trademark registration:
- Application to change the particulars of a joint trademark, such as change of a representative (the person who receives official notifications from the IPO) or attorney’s name, the applicant should submit a request with certificate of change and the consent of each joint owner and other related documents attached.
- Application to change the name, address of any joint owner and representative, or a representative/attorney’s address as mentioned in point A, the applicant should submit a request with certificate of change attached.
- The procedure of the change of the particulars in the preceding paragraph is identical to the change of trademark rights possessed by a single owner.
- Government Fees: The government fees of each type of application of joint trademark rights is identical to the government fee of each type of application of a trademark filed by a single applicant.
- Delivery: If a joint trademark application is represented by an attorney, The Registrar Office will forward the official notifications to the attorney which is deemed to be delivered to each of the joint owners. If a joint trademark application is not represented by an attorney, The Registrar Office will forward the official notifications to the representative of the joint owners which is deemed to be delivered to each of the joint owners. The duplicated copy of the official notifications forwarded to the other joint owners is only for notifications, which has nothing to do with the commencement date and statutory period counted from the delivery date.
- Issuance of Certificate of Registration: After a joint trademark application has been accepted for registration, The Registrar Office will issue one copy of the Certificate of Registration.
- Translated by Jocy Liu of International Affairs of A & Finet International IP & Law Office
