FAQs

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.