TIPS^®  Taiwan Intellectual Property Special

New Guidelines for Trademark Applications Containing Designated Goods in More than One Classes

Article 35 of the Trademark law provides that “in applying for registration of a trademark, an application with the class number and the denomination of the goods designated for use of the trademark indicated therein shall be filed with the Government Office in charge of trademark matter. The goods in different classes shall be covered by separate applications respectively.” Pursuant to the Enforcement Rule of the Trademark Law, the date of an application shall be the date on which the application, accompanied by the trademark design and specification of the class and names of goods, is duly served to the Trademark Office. The Taiwanese Intellectual Property Office of the Ministry of Economic Affairs (TIPO) announced on April 16 that an application containing designated goods in more than on classes is only a procedural violation of the “separate application rule.” Therefore, if the applicant supplements the necessary application form and fees for the additional class of goods, the application date can be maintained.

The TIPO also mentioned that where one mark is registered by the same person in multiple applications for goods in different classes, if one of the applications contains goods in the class that is designated in another application, the applicant can summit an amendment to the Trademark Office, correcting each designated goods to respective applications. By this way, the previous application date can be maintained, and no additional application fee is required.