Taiwan Trademark System
A trademark application should include designated goods or services. TIPO shall issue a Notice of Allowance if all requirements are met and pursuant to the Trademark Act and regulations. Applicant should pay registration fee within 2 months from the receipt of the Notice of allowance. After the payment of registration fee, the trademark will be published and the certificate will be issue to the registrant. Failure to pay the necessary fee will result in the withdrawal of the application.
Please note that the trademark should be used the same way the mark is applied in the application. If the application contains word and device, the use of the mark should contain both the word and the device rather than use separately. However, if word mark and device mark are filed as separate applications, applicant may use the mark conjointly.
In addition, in order to seek maximum protection, applicant should cover all the relevant classes in goods and services when applying for a trademark application.
When a trademark registration is considered in violation of the trademark regulations, any party may file an opposition, cancellation or invalidation against the mark.
" trademark " is also known as a "brand name" or "logo", and is used for identifying the specific source of goods or services provided. A trademark refers to a sign consisting of any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof.
Since the publication date of a registered trademark, trademark rights shall be bestowed upon the applicant,and an identical or similar trademark that is designated for use on identical or similar goods (services) should not be bestowed upon any other one.
Yes, according to Trademark Act, the term of trademark rights is ten years. Renewal application can be filed 6 months before the term expiration (registration fee should be doubled if filed within 6 months after expiration) ,and a trademark term of ten years shall be provided per successful renewal. The trademark fails to renew shall ipso facto extinguish from the next day of the expiration .
- After trademark registration, the right holder should file trademark application in required time to avoid the trademark being registered in other country, and the priority date shall be referred as the filing date of those claiming priority rights.
- There are 4 important conditions to claim priority right: 1
(1). A trademark applicant that has been filed in a country mutually recognizing priority right with the ROC. 2.
(2). To file trademark applicant in ROC within six months counting from the next day of the first filing date .The claim of priority right shall be made at the same time as the application is filed, and the application shall clearly indicate the filing date of the basic application and the foreign country accepting the basic application.
(3). The trademark filed for registration shall be the same with the basic application one.
(4). The applicant shall submit, within three months from the next day of its filing date in the Republic of China, a certified copy of the application admitted by the said foreign country.
Yes. One application can designate multi-class for registration; however, the fee for filing and registration is the amount derived from the number of the classes of the designated goods and services . Besides, the applicant needs to pay additional government fee for division application. Therefore, we suggest to file application each class.
Yes. According to Trademark Act, an assignment of trademark right(s) shall be entered and recorded by the Registrar Office. An unrecorded entry shall have no locus standi against any third party.
Yes. A trademark right holder may license another person to use his/her trademark on part or whole of the designated goods or services thereof. Licensing shall be entered and recorded by the Registrar Office. An unrecorded entry shall have no locus standi against any third party.
In the case where any of the following conditions occurs after the registration of a trademark, the Registrar Office shall, ex officio or upon an application, revoke the said registration:
- Where a trademark was self-altered or supplemented with additional notes whereby the trademark has caused likelihood of confusion to relevant consumers by being identical or similar to a registered trademark of another person of which is used on the same or similar goods or services;
- Where, without valid reasons, a trademark has not yet been put into use or has been suspended from use continuously for three years after registration. However, the aforementioned shall not apply to one that is in use by a licensee;
- Where no appropriate and distinguishing label(s) is affixed pursuant to Article 36. However, the aforementioned shall not apply to to those causing no likelihood of confusion by affixing distinguishing label(s) before disposition by the Registrat Office;
- Where a trademark has become a common sign, name or shape of the goods or services as designated for the said trademark;
- Where practicing a trademark causes likelihood to mislead the public with respect to the nature, quality or place of origin of the goods or services designated by the trademark; or
- Where the use of the trademark has been affirmed by judgment of a court to infringe the copyrights, patent rights or other rights of another person.
If anyone considers the registration of a trademark violates relevant provisions of Trademark Act, he/she may file an opposition within three months from the publishing date of the said trademark.
Where the registration of a trademark violates relevant provisions of Trademark Act, a concerned party or a trademark examiner may request or inquire the Registrar Office to invalidate the said registration.
China Trademark System
Since November 1, 1988, SIPO has adopted Nice Classification as the main classification system for trademark applications in China. Multi-class application is not available in China. Trademark certificates will be issued to registration after three months of publication period and where no opposition is filed against the mark. However, if the registrant does not use the mark within three consecutive years in China, any party may filed cancellation of non-use against the mark.
China law distinguishes trademarks into the following categories: principal trademark, service trademark, collective trademark and certification trademark.
Marks that are identical or similar to national flags or publicly-known state names cannot be registered as trademarks. Marks having the nature of discrimination against nationality or having the nature of exaggeration and fraud in advertising goods, or marks that are detrimental to socialist morals or customs or have other negative influences cannot be registered as trademarks.
No. Applicant should file a separate application for using the mark on goods or services that belong to another class.
Yes. For trademarks that are used on goods that are publicly displayed in an international exhibition organized or recognized by the Chinese government, the applicant can claim priority within six months from the date the goods are first displayed.
US Trademark System
US Trademark system adopts first-to-use principle, which can be divided into the four following bases:
(1) the mark has been used in the United States (use in commerce);
(2) the applicant intends to use the trademark in the United States (intent to use);
(3) based on foreign registration (foreign registration);
(4) the priority application (foreign application).
After the trademark is registered, the trademark owner must file a Declaration of Use (Section 8 affidavit) and provide specimens proving actual use of the mark in commerce. The registrant must submit the Declaration of use for every renewal in order to keep the trademark in force.
In addition, if the trademark has been used in the United States for 5 consecutive years, and the trademark is not involved in any legal disputes or trial, the registrant may file a Section 15 Declaration to gain incontestability of the mark.
® refer to registered trademark, while TM and SM refer to trademarks that are filed but have not registered.
Japan Trademark System
Japan adopts first-to-file system for trademark applications. Once allowed, the trademark is valid for 10 years from the registration date, and can be renewed within six months from the expiry date for further 10 years.
EU Trademark System
The Community Trade Mark Regulation (CTMR) was implemented since March 15, 1994. The Office for Harmonization in the Internal Market (OHIM) began accepting trademark applications from April 1, 1996.
The goal of filing a trademark application with OHIM is to acquire the exclusive right of the trademark for its designated goods and services in the OHIM member states.
Once the application is examined and allowed, the application will proceed to publication for three months for opposition by third parties. If there is no opposition filed within the publication period, or the opposition was rejected, the application will proceed to grant.
Korea Trademark System
Korean trademark registration is valid for 10 years from the registration date. The registration can be renewed within 6 months from the expiry date for further 10 years.
Madrid Union Trademark System
The Madrid system refers to international trademark application in it's member states filed under Madrid Agreement or Madrid Protocol.
Up to October 15, 2015, there are 96 member states/regions participating in the Madrid protocol or Madrid agreement, including African Intellectual Property Organization (OAPI), Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's republic of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Krygyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Senegal, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, the former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam, Zambia, and Zimbabwe. However, for the most updated list of member states of Madrid protocol and Madrid Agreement, please visit the WIPO's website via the link: http://www.wipo.int