FAQs

"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.
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 identify 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.

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.

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.

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.

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.
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.

The "representation of a trademark" mainly shows the trademark sought to be registered by the applicant and to be published in the Trademark Gazette for the public so as to prevent businesses from repeating or using the design. The applicant should use strong, durable and clean paper (for example: copy paper) to depict the trademark representation in five copies, each between 8 centimeters and 5 centimeters in lengths and widths. In the case of a colored trademark, two additional black and white copies thereof shall be provided. Do not use photographic paper, which may fade or cannot be adhered to the certificate of trademark registration.
In filing a color trademark application, the color(s) used along with a relevant description shall also be included in addition to the abovementioned.
In filing a sound trademark application, in addition to five copies of the trademark representation in musical scores, numerical musical scores or a written description, a CD recording of the sound (.wav) shall be submitted.
In filing a three-dimensional trademark application, in addition to five copies (at most) of the trademark representation in three-dimensional form, five additional perspective drawings or samples made from different views but at the same scale should also be provided.

The names of the goods or services designated by the applicant shall be specific for protecting the trademark rights and for publishing in the Trademark Gazette for the public.
The applicant shall clearly indicate the class(es) of goods or services as designated by the table specified in Article 13 of the Trademarks Regulations. The names of goods/services are given by the names commonly used in the market. If the names of certain goods/services cannot be ascertained because they are new products or services or are translated terms, the product catalogues proving the actual use or the materials describing functions, uses and raw materials may be submitted for examination.

Compared to a single-class application, a multi-class application reduces the overall filling time since only one application and one copy of relevant attachments are required, the application procedures are thus simplified. Moreover, costs are also reduced because after the multi-class application is approved for registration, government fees related to the recordation of change, assignment, license or pledge will be calculated "per application". It should, however, be noted that:
filing fees, registration fees and renewal fees are calculated "per class" rather than "per application";
in dividing a trademark, the division fees for the increased trademarks and the fees for disputes resolution, if applicable, shall also be paid; and
in the case of a multi-class application, the issue of multiple priorities may arise.

In response to the provisions that allow one application to be designated for use on multiple classes, TIPO has, since January 1, 2002, implemented relevant supporting measures such as the system of multi-class application examination and case classification procedures, with an aim to maintain the examination period at eight to ten months. However, as a result of businesses becoming internationalized and diversified, emerging of new products, and new ways of trading Internet and peripheral goods and services, certain goods or services (such as the electronic industry and the service industry) need time to clarify their nature if they have multiple functions and fall under different industries. Therefore, the time needed to examine a multi-class application may be prolonged depending on the number of the designated goods, the number of the classes, the degree of complexity or the difference of nature of these goods. If available, any specific information provided by the applicant would shorten the time required to investigate the related evidence.

A trademark applicant that has been filed in a country mutually recognizing priority with the ROC, may claim priority within six months following the filing date of which the trademark application was first filed in the given country. The filing date of the trademark in the ROC shall be the date when the trademark was first filed in that foreign country (i.e. priority date). However, the claim of priority shall be made at the same time as the application is filed, and the application shall clearly indicate the filing date of the basic foreign application and the name of the foreign country accepting the basic application. In addition, the applicant shall submit, within three months from the date following the filing of the trademark application in the ROC, a certified copy of the basic application as accepted by the government of the particular foreign country in order not to forfeit the priority right.
Since our accession to the WTO on January 1, 2002, all member states of the WTO are entitled to claim priority in the ROC.

After adopting the multi-class application system, goods in different classes may be nominated for one application only. There will be no problem if the priority dates of the goods in different classes are the same. However, if the goods in different classes have different priority dates, TIPO's current computer system cannot overcome this problem either in practice or operation because it is still under integration. Therefore, it is better if claims for multiple priorities over goods in different classes are filed separately.

"R" is generally used in trade to refer to a registered trademark and "TM" is a sign which signifies the subject as a trademark. Any trademark right holder or a registered user may show either of them in his/her trademark. Thus, they have no distinctiveness and exclusivity. In consequence, neither of them can be used as part of a trademark sought to be registered.

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.

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:
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.

Yes. Except for "trademark" and "goods or services designated for a trademark" which cannot be changed after the application for registration of the trademark has been filed, any change to the applicant's address or the representative during the proceeding of the trademark application may be made in writing stating such change.

Trademark registration adopts the "first to file" principle, so the granting of a filing date certainly affects another person's rights and interests. Once the applicant of a trademark application has clearly nominated "the trademark" and "the goods or services" sought to be registered, he/she may not randomly add or replace the goods or services thereafter. However, restriction or deletion of the goods or services is not subject to the rule because it is meant to reduce the scope of protection and therefore, will not affect another person's rights and interests.

If a trademark application has any unregistrable situation, TIPO will notify the applicant in writing to state his/her opinions. In response, the applicant may provide facts and evidence explaining the unlikelihood of confusion or the nonexistent of unregistrable condition.

After a trademark application is rejected by TIPO, the applicant may file for an administrative appeal with the Ministry of Economic Affairs through TIPO. With respect to the reasons of appeal, TIPO will first re-examine the rejected application to see if the decision is legal. If the administrative appeal is dismissed, the applicant may file an administrative suit of first with the Taipei High Administrative Court under administrative procedures. Subsequent appeal may be filed with the Supreme Administrative Court.

After a trademark application has been approved, the trademark registration shall not be published after payment of the registration fee has been paid. The payment should be made within two months from the date following the approval decision. The trademark rights related thereto are accorded on the date when the trademark registration is published, and the registration certificate is delivered by postal service immediately after the publication of the registration. Where the required fee for an approved trademark remains unpaid by the end of the stipulated period, the original approval shall be void.

The applicant may, at his/her sole discretion, select to pay the registration fee in one lump sum within two months from the day following the receipt of a notice notifying the trademark approval, or pay the registration fee in two installments. If the applicant chooses the latter, the first installment of the registration fee should be paid within two months from the day following the receipt of a notice notifying the trademark approval, and the second installment must be made within three months before the end of the third year, starting from the date of publication of the registration, if the applicant considers that the continuous use of the trademark is necessary.
For those who desire to pay the registration fee in installments, TIPO will notify them of the second installment payment before the expiration of the prescribed period.
For those who fail to pay the second installment, the trademark rights concerned shall be invalidated on the day following the expiration of the grace period for making the double payment (e.g. three years and six months calculating from the date when the trademark registration is published).

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.

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, 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.

Except for "the trademark" and "the designated goods or services" which cannot be changed, any changes to the trademark right holder's contact information or the information of its representative may be updated at any time in a written letter stating such change.

Division of a trademark means the division of the goods/services designated for a trademark. It does not mean the change of the representation of a trademark. To comply with the multi-class application system and for the flexible utilization of trademark rights by the right holder, an applicant may file an application for division of a trademark either before its approval or after its registration.
If there is any doubt about the registrability of part of the classes of the goods/services or part of the goods/services designated for the trademark application, or if some of the goods/services have been assigned, an application for division of the original application may be filed.
After a trademark has been registered, division of the trademark rights may be made because of any license, pledge creation, assignment or dispute case, so as to ensure the rights to each single trademark and the scope of use thereof, or to maintain the trademark rights that are not in conflict with others.

In applying for division of a trademark application, the original applicant shall submit a copy of the division application, a trademark application and relevant documents for each divided application (namely, documentation specified in Articles 8 through 11 of the Trademarks Regulations). The division may result in the original trademark application being divided into several new independent applications. A new application number is then assigned to each divided trademark and the examination of each divided trademark is processed. After the division has been approved, the original trademark application is marked with "division" and is closed accordingly.

After a trademark has been registered, an enterprise, if necessary, may apply for division of the trademark. The original registered trademark will be marked with "divided" and a new registration number will be assigned to each divided trademark.

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.
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.
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.

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.
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.

The identity of a trademark means that in order to comply with the goods or their packaging, container design or operation, a trademark right holder, while actually using the trademark, labels the trademark in a manner that is not exactly the same as the registered one, such as slight change made to the colors or typeface, but the commercial impression formed by such trademark in use is still deemed identical to the impression conveyed by the registered one according to general concepts prevailing in the society, it is deemed a use of the registered trademark.

The use of a trademark includes the use of a trademark for importation or exportation use, and is not confined to the marketing of the trademark in domestic market. For goods bearing a registered trademark in the ROC for exportation use, even if these goods are not marketed domestically, as the trademark aims to identify these goods as coming from a manufacturer that is entitled to protection under the Trademark Act of this country, although these goods are to be exported from the territory of the ROC, it shall still be deemed a use of the registered trademark.

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:
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.

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.

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.

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.

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.

A licensee shall label the licensing of the trademark in an obvious and distinguishing manner on his/her goods, the packaging or containers thereof or trade-related articles or documents. If the labeling of the aforementioned becomes evidently difficult, the labeling of licensing may be shown at the place of business or on other relevant articles. If a licensee violates the provisions of license labeling and no correction is made after TIPO, ex officio or upon an application, has notified the said licensee to correct within a prescribed period, licensing recordation shall be revoked.

A licensee may sub-license the trademark to another person with prior consent of the trademark right holder. It shall, however, be noted that the sub-licensing shall be labeled and shall be entered and recorded. Otherwise, an unrecorded entry shall have no locus standi against any third party. The goods/services covered by the sub-license and the term of sub-license shall not exceed the scope originally covered.

An agent or distributor only sells or distributes goods on behalf of a trademark right holder, rather than uses the registered trademark concerned to identify the source of his/her own goods, so it is not necessary to record license. However, where promotion and advertisements are launched for a foreign trademark that is not familiar to domestic people but is intended to be used on goods to be marketed in domestic market, the right to use that trademark may be obtained through license or assignment after an agreement has been concluded with the original trademark right holder.

If the trademark rights have been assigned after the recordation of the trademark licensing is binding upon a bona-fide third party through a public notice, the assignee shall undertake any encumbrance created in connection with that registered trademark. Therefore, the license agreement is still binding upon the licensee. In other words, the licensee may continuously claim the right to use the licensed trademark until the use term as agreed in the license agreement expires, which is not affected by the assignment of the trademark rights.

A licensee may use the right of the registered trademark until the term of license expires. However, if both parties agree to terminate the licensing prior to the expiration date, or if the licensing agreement expressly prescribes that either party may terminate the licensing relationship at any time and the declaration of termination has been made by a party thereto, or if the license agreement was violated and a notification stating the intent to rescind or terminate the license agreement and no objection thereto is raised, then revocation of the license recordation shall be filed. The same procedure applies to the rescindment of sub-license recordation.

Through the trademark right holder's use or publicity or advertising, a trademark right accumulates certain property value, especial for a well-known brand, since it invests the goods with highly added value. A trademark right holder may create pledges on the trademark rights in order to secure the rights of his/her creditors. Any creation, change, or extinguishment of a pledge becomes effective upon the commencement of contractual relationship between both parties, but an unrecorded entry shall have no locus standi against any third party. Multiple pledges on trademark rights may be created based on the value of the property concerned in order to secure the rights of creditors, provided that the sequence of pledge shall be determined by the precedence thereof. Without the license of the trademark right holder, a pledgee may not use that trademark.

If the name, representative or address of a pledgee changes during the term of the pledge, an application for recordation of change of registered particulars may be made. If a pledge relationship terminates due to discharge of liability or other causes, an application for recordation of the termination of pledge shall be filed. Otherwise unrecorded entry shall have no locus standi against any third party.

No. A certificate mark, a collective membership mark and a collective trademark are regarded as intangible properties under the Trademark Act, and the provisions of the Act regarding trademarks shall apply mutatis mutandis to them. For example, the term of existing rights, renewal registration and remedies for right infringement related to trademarks shall apply. However, in view of the nature and characteristics of a certification mark, collective membership mark and collective trademark, their assignment, license or pledge may affect consumers' rights and interests and fair competition. In principle, no pledge creation, assignment or license to another party shall be made, unless the assignment or license of a particular mark to another party has been approved by TIPO.

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.