Trademark

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Taiwan                       Trademark
 

 

Signs of which trademark may consist; distinctiveness

　A trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or anycombination thereof.

　The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.
 

Right of priority; same treatment for certain categories of persons as for nationals of ROC

　An applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with the ROC, or filed such application with a member of the World Trade Organization (WTO), may claim a right of priority, for the purposes of registering the same trademark in the ROC for some or all the same goods or services, within six months from the day following the date of filing of the first such application.

　An applicant of a foreign country which is not a member of the WTO nor a country having reciprocal recognition of priority rights with the ROC, may claim a right of priority pursuant to the preceding paragraph if he/she is domiciled or has a business establishment in the territory of a country which has reciprocal recognition of priority rights with the ROC or in the territory of a member of the WTO.

　An applicant who claims priority pursuant to paragraph 1 shall submit a written statement to that effect simultaneously with the application which shall set forth the following:

(1)

the date of filing of the first application;

(2)

the country or the member of the WTO in which the first application was made; and

(3)

the application number of the first application.
 

　The applicant shall submit, within three months from the day following the date of filing of the application, a copy of the application certified as admitted  by the country or the member of the WTO referred to in the preceding paragraph.

　If the statement or the statement copy of the application is not submitted pursuant to Subparagraph 1 or Subparagraph 2 of Paragraph 3 or the preceding paragraph, the priority claim shall be deemed not having been made.

　If an application is filed with a claim of priority, the date of priority shall count as the date of filing.

　If an application is filed with a claim of multiple priorities, the date of each priority shall count as the date of filing of goods or services in respect of such priority.
 

Grounds for refusal of registration: devoid of distinctiveness; disclaimer 

　A trademark shall not be registered if it is devoid of distinctiveness in any of the following: 

(1)

consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;

(2)

consisting exclusively of the generic mark or term for the designated goods or services; or

(3)

consisting exclusively of other signs which are devoid of any distinctiveness.

　Subparagraph 1 or 3 of the preceding paragraph shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant. 

　Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such trademark without disclaimer shall not be registered. 
 

Other grounds for refusal of registration 

　A trademark shall not be registered in any of the following:

(1)

being exclusively necessary for the goods or services to be functional; 

(2)

being identical with or similar to the national flag, national emblem, national seal, military flags, military insignia, official seals, or medals of the ROC, or the state flags of foreign countries, or the armorial bearings, national seals or other state emblems of foreign countries communicated by any member of the WTO under Paragraph 3 of Article 6ter of the Paris Convention;

(3)

being identical with the portrait or name of Dr. Sun Yat-Sen or of the head of the state; 

(4)

being identical with or similar to the mark of a government agency of the ROC or an official exhibition held thereby, or the medal or certificate awarded thereby; 

(5)

being identical with or similar to the armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for public interests, and hence being likely to mislead the public; 

(6)

being identical with or similar to official signs and hallmarks indicating control and warranty adopted by the domestic or foreign countries, and being designated to the identical or similar goods or services;

(7)

being contrary to public policy or to accepted principles of morality;

(8)

being likely to mislead the public as to the nature, quality, or place of origin of the goods or services; 

(9)

being identical with or similar to a geographical indication for wines or spirits in the ROC or a foreign country, and being designated to goods that are identical with or similar to wines or spirits, where that foreign country concludes with the ROC an agreement, or accedes to an international treaty, to which the ROC also accedes, or has reciprocal recognition with the ROC of protection of geographical indications for wines or spirits; 

(10)

being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper; 

(11)

being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application;

(12)

being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual,

(13)

containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application;

(14)

containing the name of a well-known juridical person, business or any group, and hence there exists a likelihood of confusion on the relevant public, unless the said juridical person, business or group consents to the application; or

(15)

being an infringement of another person’s copyright, patent right, or any other right, where a final judgment of the court has been rendered, unless the said person consents to the application.

　
　The determination of a geographical indication, well-known trademark/mark, and earlier used trademark as prescribed in Subparagraph 9 and Subparagraphs 11 to 14, respectively, of the preceding paragraph shall be based on the facts at the time of filing. 

　Subparagraphs 4, 5 and 9 of Paragraph 1 of this Article shall not apply if the applicant is a government agency or related institution. 

　Paragraph 3 of the preceding article shall apply mutatis mutandis to the ground for refusal prescribed in Subparagraph 1 of Paragraph 1. 
 

Right conferred by registered trademark and duration of registration 

　The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of ten years from the date of publication of registration.  

　The period of the trademark right may be renewed, and the duration of each renewal period shall be ten years.