TRADEMARKS FILING AND PROSECUTION IN TAIWAN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Taiwan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Taiwan intellectual property office provides the series of complete procedures and instructions for the trademark entry, application acquisition, maintenance and administrative remedies. 
|Relevant office||Taiwan Intellectual Property Office (TIPO)|
|Nice classification||Yes (10th edition)|
|Multi class system||Yes|
|Documents required for filing a trade mark application||Signed Power of Attorney|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within 3 months from the day following the publication of the registration) registration renewal|
|Registration term||10 years from the registration date|
|Renewal term||10 years|
Trademark searches in Taiwan
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Taiwan can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the Taiwan Intellectual Property Office. The official website of the office provides with an option of search for trademarks, an online search can be conducted through the website of the office. The trademark searches can be conducted through an application date or priority date and it also provides with an option of data pool for the applications Applied (live), Applied (dead), Registered (Live), Registered (dead), and Rejected. Trademark searches can also be conducted by applicant name and case number on the official website of the office.
Trademark word search edition of Taiwan follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Taiwan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Taiwan. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Taiwan can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Taiwan
A person may file multi-class or single class trademark application in Taiwan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in Taiwan:
Ordinary trademark applications filed in Singapore are applications without claiming any priority. An ordinary application for the registration of the trademark can be filed online through an official website of the Taiwan Intellectual Property Office. The option of Electronic trademark application is present on the website. E-Netcom website is also available for the detailed operation procedures for the electronic trademark applications. Multi class trademark applications may also be filed in Taiwan. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in member states of WTO.
Priority trademark applications in Taiwan:
A priority trademark application may be filed in Taiwan. A priority trademark application should be filed in Taiwan within 6 months after the date on which the application was made in the member states of WTO. 
World Trade Organization
The World trade organization is the only organization in the world which deals with the trade related rules among the nations. It acts as forum for negotiating the agreements between the nations and it also helps the developing nations in their needs and it also settles trade disputes among its members. The primary purpose of the WTO is to open trade for the benefit of all the member nations. There are over 160 members representing about 98 percent of the world in the WTO and about 20 countries are seeking to join the WTO. Those who have filed a trademark application in a country mutually recognizing priority with the ROC may claim priority within six months following the date on which their trademark application was first filed in the given country.
Trademark classes for goods and services
Taiwan follows the nice classification of classes. Taiwan Intellectual property office uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
TIPO also publishes the Industry Trademark Application strategy manual for designated goods and services classification. Basically, it offers suggestions regarding the selection of the goods and services when filing trademark applications for getting trademark protection. Moreover, it provides a cross reference between the standard industrial classifications and nice classification.
Trademark examination in Taiwan
One the application is submitted for the registration of the trademark it goes through the examination stage. In this stage registrar will examine the application if it has met all the legal requirements of the registration or not. The application for the registration cannot be registered if it is devoid of distinctiveness mentioned in Article 29 and other grounds as mentioned in Article 30.
If the application for registration is refused, a written notice stating the grounds for refusal shall be given to the applicant and he must submit the proper submissions or amendments necessary in the application within the prescribed time period.
An application for the registration is accepted if after examination none of the grounds of refusal is found in application. 
Trademark opposition in Taiwan
A person may file a notice of opposition to registration of a trademark with the registrar office within three months from the day following the publication of the registration.
A person who is interested in opposing a trademark shall submit a notice of opposition stating the facts and circumstances along with any attachments with the registrar.
The registrar will then serve the copy of the opposition to the applicant who then will file the statement of defense within the prescribed time period. After this on receiving the statement of defense the registrar will serve the copy to the opponent who then will submit his/her opinion within the prescribed time period.
Where the statements and opinions are submitted and the facts and the evidence are sufficiently clear, the registrar may conduct a opposition proceedings without giving the notice to opposite party to submit a statement of defense or opinion.
Trademark registration in Taiwan
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of the registration and the registration certificate is issued.