TRADEMARK Q & A

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  • 1. Differences between Trademarks and Other Intellectual Property Rights
      In addition to trademark rights, intellectual property rights also include patent rights, copyrights, trade secrets and integrated circuit layout. Patent rights are intended to promote and improve the technological development of national industries, while copyrights aim to foster the nation's culture. Both rights have a certain period of validity. On the other hand, trademark rights are deemed a kind of goodwill that is developed from the accumulation of long-term and continuous use. Trademark rights have no set term for expiration, as long as they are renewed and as the enterprise remains in business. Hence, trademark rights are highly regarded.
    A trademark may be any sign consisting of a word, figure, symbol, color, sound, three-dimensional shape or any combination thereof, and is used in the competitive market for identifying the source of the goods or services. Unless the right holder has renounced trademark rights, or the mark has become a generic name for the industry or has lost its distinctiveness, the trademark rights can be used continuously through renewal.
     Copyrights mainly protect a creation within a literary, scientific, artistic, or other intellectual domain that is an independent distillation of the author's wisdom and techniques. Therefore, a creation must be original but not necessary unprecedented. Works include oral and literary, musical, drama, choreographic, artistic, photographic, audiovisual, and architectural works, and computer programs. In general, economic rights endure a term consisting of the life of the author and fifty years after the author's death.
     Patent protection is for the purpose of encouraging invention and creation so as to upgrade the industrial standards of the nation. A patent that is qualified for protection must be novel, advanced, practical and is applicable in the related industries. A patent is accorded to the patent holder for a definite period of time and emphasizes the result of research and development. Upon the expiration of the period granted to a patent, the technology related thereto will be in the public domain for the industry to use to benefit the masses.

     

    2. What is a "collective trademark"?
      As the term suggests, a "collective trademark" is a brand commonly used by the members of a group. It could be a farmers' association, a fishermen's association, or other associations that are eligible for filing an application for registration of a collective trademark. All goods or services produced/manufactured or provided by the association members may label the collective trademark to distinguish those goods or services from goods or services produced/manufactured or provided by others. A collective trademark is intrinsically still a trademark. However, the major difference between a collective trademark and a trademark is that a collective trademark is used by the members of a group in connection with goods or services, while a trademark is used by the registrant for identifying his/her own goods or services. (§76, Trademark Act)

    3. What is a "collective membership mark"?
      A collective membership mark identifies the organization or membership of a business association, social organization, or any other group that exists as a juristic person; that is, a collective membership mark is a general membership mark. The Lions Club, the Rotary Club, and a political party are all eligible for filing an application to register a collective membership mark for identifying their organizations or memberships. A collective membership mark has no direct relationship with business activities related to goods or services, as it simply identifies the organization of the group itself or the membership of its members and will be displayed on relevant articles or documents, while a collective trademark identifies the goods or services provided by the members of the group using the trademark. They are different intrinsically. (§74;§75, Trademark Act)

    4. What is a "certification mark"?
      A certification trademark is a sign used to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, e.g., the Taiwan fine product sign, UL electrical appliances safety sign, ST toy safety sign, and 100% wool sign, which are familiar to the average Taiwanese consumers. An applicant of a certification mark must be a juristic person, group or government agency that is capable of certifying an entity's goods or services. The use of a certification mark shall mean that the right holder of a certification mark, in order to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, agrees to the person for displaying the certification mark on articles or documents in connection with the goods or services. (§72;§73, Trademark Act)

    5. Can a Taiwanese general agent of foreign trademarked goods apply for registration of the foreign trademark concerned?
      A trademark is used for identifying goods that one produces or for which one acts as an agent, and a general agent promotes and publicizes the goods it selects or sells in the ROC. With the consent of the original trademark right holder, the general agent may apply for registration of the foreign trademark in its own name. However, if it is agreed that the general agent is authorized to market the goods only, without consent from the original trademark right holder, the general agent may not apply for registration of the foreign trademark in its own name, but instead, the application shall be filed in the name of the foreign merchant or manufacturer.

    6. How long does it take for a trademark registration to be approved?
      The procedures for examining a trademark application differ from a general application filed by the public and are more complicated. In addition to examining the designated goods, a search of the representations of prior registered trademarks and the examination on whether the trademark has any unregistrable conditions must be carried out. Currently, there are nearly 1,900,000 registered trademarks. (http://www.tipo.gov.tw/trademark/trademark_repert/trademark_report.asp) Therefore, the examination of a trademark application takes some time, approximately eight to ten months. Data on the Internet indicates that it takes about 11 months in Japan and 19.8 months in the US for a trademark application examination to complete. (http://www.tipo.gov.tw/trademark/trademark_time.asp)

    7. How to acquire the filing date of a trademark?
      In order to make sure the trademark sought to be registered by the applicant, the filing date of a trademark application shall be the date on which the application indicating the applicant, the trademark representation and the designated goods or services is filed.(§17, Trademark Act)

    8. How to claim trademark priority?
      A trademark applicant that has been filed in a country mutually recognizing priority with the ROC, may claim priority within six months following the filing date of which the trademark application was first filed in the given country. The filing date of the trademark in the ROC shall be the date when the trademark was first filed in that foreign country (i.e. priority date). However, the claim of priority shall be made at the same time as the application is filed, and the application shall clearly indicate the filing date of the basic foreign application and the name of the foreign country accepting the basic application. In addition, the applicant shall submit, within three months from the date following the filing of the trademark application in the ROC, a certified copy of the basic application as accepted by the government of the particular foreign country in order not to forfeit the priority right.(§4, Trademark Act)

    9. Can multiple priorities be made for a multi-class application?
      After adopting the multi-class application system, goods in different classes may be nominated for one application only. There will be no problem if the priority dates of the goods in different classes are the same. However, if the goods in different classes have different priority dates, TIPO's current computer system cannot overcome this problem either in practice or operation because it is still under integration. Therefore, it is better if claims for multiple priorities over goods in different classes are filed separately

    10. Can different people acquire the registration of an identical trademark in different countries?
      The Trademark Act is a territory-based law, and the protection of a registered trademark is made on the territory basis. Hence, it is possible for different people to acquire the registration of an identical trademark in different countries. If a manufacturer considers any global factor with respect to the operation and marketing strategies of its trademarked goods/services, it has to seek for international protection by filing applications in the countries where its goods/services are provided.

    11. How to disclaim the exclusive use of a trademark?
      Any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof contained in a trademark shall be distinctive enough to allow a relevant consumer to identify the trade source of certain goods/services of a certain manufacturer or merchant and to distinguish such goods or services, and thus, is deemed to have distinctiveness. After a trademark is registered, the trademark right holder thereof enjoys the right to exclusively use the same and exclude the use by others. Therefore, a trademark as a whole must be distinctive. In case a trademark contains any descriptive or non-distinctive word or figure, the applicant may declare that such portion (word or figure) is not for exclusive use apart from the trademark to avoid being rejected, since that portion may arouse disputes over the right to use that portion exclusively after the trademark is registered. The applicant may make a disclaimer of exclusive use if any of the following conditions apply: (§19, Trademark Act)
     The trademark contains descriptive or non-distinctive word or figure;
    Deletion of part of the wording or figure from the trademark will make the trademark incomplete; and
    The applicant declares that the right to exclusive use of such portion shall not be made apart from the entire trademark.

    12. Can the particulars of a trademark be changed while the trademark application is in progress?
      Yes. Except for "trademark" and "goods or services designated for a trademark" which cannot be changed after the application for registration of the trademark has been filed, any change to the applicant's address or the representative during the proceeding of the trademark application may be made in writing stating such change. If the applicant's name, or its agent or seal changes, a request to change form shall be filed with the following documentation: (§20, Trademark Act)
     Application (the applicant may download the application form from http://www.tipo.gov.tw/trademark/921128/05-1 application for amendment before trademark approval, or purchase the application form in person at the Counter located on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs".
    Government fee: NT$500.
     Documentation proving the change (such as a photocopy of ID card, business license or Profit-seeking Enterprise Registration Certificate, seal).
    If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

    13. What should be noted after a trademark has been granted registration?
      After acquiring the rights to a trademark, the registrant shall, in particular, note the following matters:
    (1) renewal of the term of exclusive use; (2) obligation to continuously use the trademark; (3) recordation of licensed use; (4) prohibition of change or additional notes to the trademark, whereby the trademark is made similar to another person's trademark.
     Please bear in mind that registration renewal shall be filed prior to the expiration of the term of exclusive use thereof.
    The term of trademark rights is ten years. Renewal application shall be filed prior to its expiration and each renewal is limited to ten years. In the case of failure to apply for renewal by the expiration of the term, the trademark rights shall be invalidated the day following the expiration of the term of trademark rights. For instance, in the case that no renewal application is filed for a trademark whose registration is published on January 1, 2004, the trademark rights will become invalid at 00:00 on January 1, 2015. (§33? Trademarks Regulations)
    Continuous use of the trademark
     The lawful acquisition of trademark rights after the registration of the trademark not only means the acquisition of the rights to exclusively use the registered trademark, but also eliminates another person from using an identical or similar trademark(s) on the same or similar goods. If a trademark right holder does not actively use his/her registered trademark, not only the goodwill related thereto cannot be accumulated, but also it will hinder others' opportunity to enter the market. The occurrence of the above will contravene the purpose of trademark protection. If a trademark has not been used or has been continuously suspended from use for three years after its registration, the registration of the trademark shall be revoked. (§57 I ?, Trademark Act)
    Recordation of licensed use.
     Due to operational concepts, the trademark rights may be licensed to another party, in whole or in part. Unrecorded licensing may not be set up as a defense against any third party.
     Please use the trademark as it is registered and do not use the trademark with any change or additional notes thereon.
     Prohibition of change or additional notes to a trademark mainly avoids improper use of the trademark. That is to say, the clause is to prevent the situation in which a trademark is not used in accordance with the trademark as registered, but instead, the trademark in use is with any change or additional wording or device, thus making the trademark insinuating another person's goods or causing the public to misidentify the trademark as other's. If the rights and interests of the right holder of another trademark are thereby affected in practice, the registration of the said trademark shall be revoked by law.

    14. How to abandon trademark rights?
      If, in view of the operation status and the specific needs of an enterprise, a trademark right holder no longer needs to use the trademark concerned, he/she may notify TIPO in writing, stating the intent to abandon the rights. If so, the trademark rights terminate on the date when such notification reached TIPO. However, where license or pledge recordation has been made, the abandonment of trademark rights become effective only with consent from the licensee or pledgee. (§38, Trademark Act)

    Note: Information extracted from the web site of Taiwan Intellectual Proper Office (TIPO) http://www.tipo.gov.tw/en/index.aspx.
     

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