In order to obtain trademark rights in Taiwan, the trademark necessarily has to be registered, as it is a “first-to-file” jurisdiction. However, in exceptional cases, well-known trademarks can be protected even if they have not been filed yet.
Trademark applications are filed through the Taiwan Intellectual Property Office (TIPO).
Use of the trademark prior to filing is not necessary to register it. It may be useful, however, as it may help overcome objections based on lack of distinctiveness by granting the trademark acquired distinctiveness.
Please note that by default your logo (device) application in Taiwan will be filed without color claim. If you wish to claim color as a distinctive feature of the trademark, please instruct us to do so. Additional charges may be applicable if claiming color.
If you register a combined trademark (which includes both word elements and figurative elements) in Taiwan, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Once the application is accepted for registration, the grant of registration will be published, marking the beginning of a three-month period during which third parties can file an opposition against it.
If a trademark is not used during the three years following the registration, or for any term of three consecutive years, then it will become vulnerable to cancellation actions.
In Taiwan, trademarks are registered for a period of ten (10) years starting on the registration date and can then be renewed indefinitely for periods of ten years. The renewal may be requested from six (6) months before expiration to six months after. If the renewal is requested after expiration, additional fees will apply.
For trademark search reports the trademark must be composed of the Latin alphabet and will only consider other trademarks in the Latin alphabet. If you wish to register a trademark that is composed of pinyin or hanzi characters (Chinese writing) the trademark search must consider trademarks written in pinyin or hanzi characters (Chinese writing). Please contact us if this is the case, additional fees will apply.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Taiwan (Trademark Assessment Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.