Trademarks in Taiwan
You may be surprised, but trademarks provide stronger protection than that patents and even copyrights can offer.
A trademark has a term of 10 years, and thereafter may be renewed multiple times. It can last as long you (and generations after you) want it to last. In comparison, patents and copyrights have limited lifespans -- 10 to 20 years for patents, and the author’s lifetime plus 50 years or 50 years after publication for copyrights.
To add, a trademark owner may seek civil and criminal remedies in case of infringement. Where the trademark owner chooses not to file a criminal complaint, the prosecutor can still pursue the infringer. A patent owner, on the other hand, can seek only civil remedies, and although a copyright owner can seek both civil and criminal remedies, to pursue a criminal action, the owner has to file a criminal complaint, without which the prosecutor cannot open criminal investigations. The copyright owner has to file this criminal complaint within 6 months from his knowledge of the infringer.
Trademarks mainly serve to identify and distinguish the source of goods and services. What we commonly perceive as trademarks come in the form of texts, graphics, patterns, symbols, or their combination. But trademarks can take other forms as well, such as the shape of a product or packaging, color, motion, hologram, sound, etc., as long as they can help identify and distinguish the source of goods or services and can be presented in a clear, definite, complete, objective, permanent, and understandable manner.
Once you start using your trademark, you expend considerable resources so it would be wise to do a trademark search to see whether your trademark will be regarded similar or identical to other trademarks that have been filed before actually using your trademark. Doing this will not only help you know your chances of getting your mark registered and save filing costs, it will also help you avoid violating others’ trademarks.
After deciding which trademark to file for, you select its classification. Taiwan follows the NICE classification which includes 35 classes of goods and 11 classes of services. After filing your application, the trademark examiner at the Intellectual Property Office (IPO) reviews it to see whether your documents are complete, and more importantly whether there are reasons that your trademark should not be registered.
Registration is completed after you pay your registration fee, your trademark registration is published, and the IPO issues the trademark certificate. The whole process generally takes at least 8 months, and can go longer especially if your documents are incomplete or if the IPO has reasons to refuse your application and requests your comments.
Trademark protection is for 10 years starting from the date the trademark registration is published. As long you are using your trademark, you can file for renewal within the 6-month period before or after the supposed trademark expiry. If you miss this deadline, you lose this trademark as soon as it hits expiry date, and your only option by then will be starting a new registration.
The information above is intended to give a general introduction only and does not constitute legal advice. If you require further assistance, please contact aliciahsulawyer@gmail.com. (August 2020)
