Trademark

How do you register or secure trademark rights, and what protection does it grant?

Taiwan’s Trademark Act adopts the principle of registration protection. Whoever intends to use a mark to identify his goods or services should file a trademark application with TIPO to secure his trademark right. The owner of a registered trademark has the right to prevent others from using or registering the identical or similar mark on identical or similar goods and services.
Trademarks, certification marks, collective trademarks and collective marks are protected subject matter. In addition to conventional trademarks, non-conventional trademarks such as single color or color-combination marks, sound marks and three-dimensional shapes are also registrable if they satisfy the distinctiveness requirement. The registration system also provides protection for geographical indications or geographical names.

What are the costs of registering a trademark, and what are the costs of defending it?

The cost of registering a trademark in one classification of goods or services ranges from
$1,250 to $1,750, assuming there are no more than two uncomplicated office actions.

To defend a trademark right, the right holder may choose to file an opposition, invalidation or cancellation with TIPO, or to take litigation actions, such as civil and criminal actions. For an opposition, invalidation or cancellation proceeding, the minimum expense could be as low as $1,000 but might go up to $5,000, depending on how many briefs and counter-briefs are needed. Litigation costs start at $6,000 for a first instance proceeding at a district court.

What are the Key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

The key threat to trademark owners in this jurisdiction is the import of counterfeits.
Since most of the counterfeit products are manufactured outside this country, especially in Mainland China, it is difficult to investigate the whereabouts of those responsible, which frequently leads to a non-actionable result because the potential defendants have no presence within the jurisdiction of Taiwan.

Since most infringing activities are conducted across the China-Taiwan border, the best strategy for dealing with infringement is to have lawyers in both jurisdictions who are prepared to co-ordinate during proceedings.

What are the most common mistakes trademark owners make?

• Not filing trademark applications before use:
Trademark owners who have used or started to use their trademarks without first filing applications for protection may later find that they are in conflict with identical or similar prior marks that are already registered or filed by others

• Marks become generic:
The mark is used in a way that consumers identify as the name of goods rather than the indication of the origin. The distinctiveness of the mark is thereby lost and evidence of use is difficult to establish when TIPO requests such use to be demonstrated by the trademark owner.