Global Trademark Application

In our country, the trademark system is based on the principle of registration protection. Once a trademark is legally registered and trademark rights are obtained, the trademark holder can not only use the trademark themselves and authorize others to use it, but also exclude others from using the same or similar trademarks for the same or similar goods/services. If someone uses the trademark without the trademark holder’s consent, resulting in infringement or potential infringement of trademark rights, the trademark holder can request to eliminate or prevent the infringement. Additionally, they can seek damages from those who intentionally or negligently infringe upon the trademark rights.

The Intellectual Property Office’s official website offers applicants the service of online applications, allowing them to save on service fees of three to five thousand. However, most people still choose to seek assistance from a firm. Why is that?

There are three main points:

1. Time-saving: Compared to gathering information online and calling firms with related questions, only to eventually submit the application and then receive a correction notice from the Intellectual Property Office, which leads to starting the process all over again… Choosing to work with a patent and trademark firm, although it incurs additional costs, improves efficiency and increases the approval rate.
2. Increased approval rate: With the assistance of a firm, trademark specialists can help clients determine whether their logo complies with the regulations according to trademark law before applying. They also provide trademark search services to check for any similar prior cases, advising on how to avoid potential conflicts.
3. Cost-effective: While hiring a firm incurs an additional service fee, is it truly cost-saving? If an applicant does not plan thoroughly and later receives a preliminary notice of rejection from the Intellectual Property Office, requiring a response, the cost from a typical firm would range from 8,000 to 15,000 NT dollars.

If two or more individuals want to jointly own a trademark, they can submit a trademark registration application together. During the application, all co-owners must be named, and it is advisable to designate one person as the representative to handle all application procedures and receive related documents on behalf of all co-owners. If no representative is designated, the Intellectual Property Office will consider the first applicant listed in the application as the recipient and will notify the other co-applicants of any relevant matters.

The effectiveness of trademark registration is based on the principle of territorial protection. Trademark rights acquired in a specific country or region are only protected within that registered area. Therefore, even if a trademark has been approved for registration in our country, if the product is to be marketed in other countries, it is advisable to apply for registration in those countries as well to avoid infringing on the trademark rights of others.

After trademark registration, the trademark holder obtains trademark rights for the goods/services designated in the registration. Therefore, the use of the trademark should refer to the registered trademark being used on the designated goods/services. If multiple trademarks are combined into a single design for registration to save on fees, once it is approved through examination, the trademark cannot be used only in part or separately. Doing so would create a different overall impression from the registered trademark, which could result in the risk of having the trademark rights revoked for non-use of the registered trademark.

The design submitted for trademark registration should generally reflect the actual usage or intended usage of the trademark. If the trademark is registered in black-and-white or a single color, and it is used in different colors in practice, it can still be considered as using the registered trademark, provided that there is no substantial change in the characteristics that primarily identify the registered trademark.

However, if the registered trademark consists of a combination of two or more colors (i.e., a color design), and those colors are a significant feature of the trademark’s primary identification, using the trademark in black-and-white or in different colors may likely alter the impression that the trademark gives to consumers regarding its source. In such cases, it would not be considered as using the registered trademark.

It is important to conduct a search beforehand. However, the determination of similar goods varies by country, so it is best to use the standardized names from the Nice International Classification.

According to our country’s trademark law, an application for the registration of a trademark that is identical or similar to a trademark previously used by another party on the same or similar goods or services cannot be registered unless consent is obtained from the prior user. Therefore, even if someone else registers the trademark, the original trademark owner can file an opposition based on the trademark law and subsequently submit a trademark application.

A trademark is declared as non-exclusive when it contains descriptive or non-distinctive elements, and removing those elements would compromise the overall integrity of the trademark. This request is made because the trademark submitted by the applicant is typically one that has already been used in practice or is intended for use in the market. From the applicant’s perspective, the descriptive or non-distinctive parts are considered integral to the complete trademark, and their removal would diminish the original integrity of the trademark being applied for.

From the perspective of trademark registration, a trademark that is overall distinctive serves the function of distinguishing the source of goods or services. Unless there is a necessity to remove such elements—such as when a non-distinctive part may lead consumers to mistakenly believe something about the nature, quality, or origin of the goods or services—registration can proceed by declaring non-exclusivity, thereby respecting the applicant’s practical usage needs.

Taiwan is not a member of the Madrid Protocol and can only claim to be of “Chinese nationality” when submitting applications to the Beijing Trademark Office. However, this poses many legal risks. Although a trademark may be obtained through the Madrid Protocol, others can assert that “Republic of China nationality” is not equivalent to “Chinese nationality.” Based on past experiences, such as copyright protection, other countries do not recognize works from the “Republic of China” as belonging to “Chinese nationality.” Therefore, we do not recommend that clients apply for trademarks through the Madrid Protocol, and very few companies from Taiwan currently utilize this route.

In practice, the Madrid Protocol is not as straightforward as one might imagine; not all countries automatically approve registrations. Each country will still examine the trademarks. As a Taiwanese applicant applying for international registration through the Madrid Protocol, the following five points should be noted:

1.Taiwanese applicants must have a basic registration in mainland China (i.e., they must have applied for or registered a trademark in mainland China).

2.The trademark reported must be identical to the basic registration.

3.The name of the applicant must be identical to that of the basic registration.

4.The goods or services applied for must not exceed the scope of the basic registration.

5.Within five years from the date of international registration, if the basic registration is wholly or partially revoked in China, the international registration will not be protected in any of the designated countries, regardless of whether the international registration is transferred; in other words, the international registration will also be revoked.

The applicant’s fees are calculated in Swiss francs based on the unified fees, or separate fees must be paid according to the “Protocol,” eliminating the need to pay fees individually to each designated country. Therefore, if applications are needed in multiple countries, it may be worth considering applying through the Madrid Protocol.

From the date the applicant submits the international trademark registration application to the trademark office, if all procedures are complete and fees are paid as required, the trademark registration certificate can typically be obtained within three to four months. According to the provisions of the “Agreement” and the “Protocol,” the trademark application will have its territory extension application rejected by the trademark authorities of the designated countries within twelve months (for the Agreement) or eighteen months (for the Protocol) from the date of the international registration at the International Bureau. This means that applicants can determine within approximately twelve to eighteen months whether their international registered trademark is protected in the respective countries.

The examination of trademark registration applications differs from general applications made by individuals; the examination process is more complex. In addition to reviewing the specified goods or services for each case, it is necessary to conduct searches and reviews of prior registration data for the trademark. With over 1.7 million registered trademarks currently, the examination can take a considerable amount of time, approximately 6 to 7 months. However, the processing time is counted from the date of receipt, and does not include periods for notification of corrections, responses, or delays due to other legitimate reasons.

The declaration of non-exclusivity is merely an administrative measure to preemptively address potential trademark disputes during the examination process. Whether a registered trademark is declared non-exclusive for specific matters is not the sole basis for determining whether trademark rights have been obtained in the future. Furthermore, after trademark registration, the trademark owner acquires the right to use the entire trademark for the designated goods/services, not just the right to use specific parts of the trademark. The assessment of whether a trademark may cause consumer confusion or misrecognition should still be based on the overall trademark design.

Therefore, for parts of the trademark that lack distinctiveness, regardless of whether they are declared non-exclusive due to potential ambiguities within the scope of trademark rights, or if they are not subject to ambiguity and remain undeclared, they will be given less attention or may be ignored in the assessment. Whether there is a risk of confusion or misrecognition that warrants asserting rights should still be judged based on the specific circumstances of each case.

If there is a business need, government agencies can submit a registration application using the agency’s emblem or other text and graphics specified for relevant goods/services (Trademark Act Article 30, Section 3). If someone else applies for trademark registration using the same or a similar emblem of a government agency or a certificate awarded by the agency, the Intellectual Property Office will reject the application in accordance with Article 30, Section 1, Item 4 of the Trademark Act. To facilitate the examination process, the Intellectual Property Office currently accepts record-keeping for government agency emblems and will announce them in the Trademark Gazette after they have been recorded.

If one knowingly applies for a trademark that is already in use by another party without their consent, even if the application is approved and registered, the trademark can be revoked if it is later proven that there is a contractual, geographical, business, or other relationship with the other party, and that the applicant was aware of the existence of the other party’s trademark with the intention of imitation. This applies especially if the trademark is identical or similar to the one used by the other party on the same or similar goods/services.

When the names of famous historical figures are related to the content of goods or services, it can easily lead relevant consumers to associate the name with the description of those goods or services. For example, using “Emperor Taizong of Tang” or “Zhuangzi” for Class 9 audiovisual discs or Class 16 books may lead people to believe that the content of the discs or books pertains to the stories of Emperor Taizong of Tang or Zhuangzi’s life. Such applications should be rejected.

Furthermore, any words, titles, or other names associated with famous historical figures that the general public can link to specific historical individuals will undergo the same scrutiny for distinctiveness as their names. The prominent image of a well-known historical figure often carries a social educational function; therefore, if such images are used in connection with designated goods or services, resulting in disrespectful or derogatory associations that may harm public order or morality, they should not be registered.

Trademark examination is based on a case-by-case principle. If Party A has previously issued a letter of consent agreeing to the registration of Party B’s trademark, and later Party A applies for another trademark that may cause confusion with Party B’s trademark, Party A must still obtain the consent of Party B’s trademark owner before registration can be approved.

If the applicant fails to pay the registration fee within two months after the legal delivery of the approval certificate and it is not intentional, they may pay double the registration fee within six months after the deadline to proceed with the registration announcement. However, if a third party has already obtained trademark registration or has submitted an application at the time the applicant submitted their application, the applicant cannot proceed with the registration announcement by paying double the fee to avoid affecting the rights of the third party.

In our country, trademark registration or use does not follow a mandatory registration system. Applicants can still freely use a trademark to represent their business’s goods/services before obtaining trademark rights. However, it is important to ensure that the trademark used does not infringe on others’ trademark rights.

Once the trademark is approved, the applicant must pay the registration fee within two months of receiving the approval notice. The Intellectual Property Office will then publish the trademark registration in the trademark gazette. From the date of registration publication, the rights holder will obtain trademark rights, which are valid for a period of 10 years.

TM™ (Trademark): This symbol indicates a “trademark” and is typically used for unregistered trademarks or to signify that a trademark is in the application process.
R® (Registered): This symbol indicates a “registered” trademark, meaning that the trademark has been officially registered.