Questions

¡·Requisite Information for Trademark:
¡·What Is a Famous Trademark?
¡·How many types of trademarks may be applied based on my business mark?

Requirement for filing a trademark application in Taiwan

Full name and address of the applicant.

If an applicant is a natural person or a legal entity in China, please provide the identification papers.

Power of attorney

Logo

Items of goods/services

International classification

How many types of trademarks may be applied based on my business mark?

The design of a trademark may be expressed by word, drawing, symbol or combination thereof.  The types of the trademarks are clearly defined when considering the protection scope and effects thereof.  We will introduce them in the following.

Principal Trademark: the trademark firstly registered or applied by the applicant.  This term includes the relative meaning to distinguish itself from the associated trademark or the defensive trademark. 

Certification Mark: an exclusive use of a mark for providing knowledge or technology to certify the characteristics, quality, precision or other matter of another person¡¦s goods or service.  For example, Woolmark

Collective Mark: an exclusive use of a mark to distinguish its organization or membership.  For example, the Mark of Rotary Club.

Requisite Information for Trademark

I.  Goods in different classes could be filed for trademark registration together.

II.  Goods are classified by international classification and into 34 goods categories and 11 service categories.

III.  The term of the exclusive use of a trademark is within 10 years starting from the registered date.  The term of the associated and the defensive trademarks is the same as that of its principal trademark.

IV.  The term of the exclusive use of a trademark is extendible and the extended period is limited to 10 years. 

V.  The extension of a trademark shall be made within six month before or after the expired date thereof.  However, if the extension is made within six month after the expired date, the official fee is doubled.

VI.  The exclusive right of a trademark is limited to the registered trademark and the designated goods.

VII.  The government authority may withdraw the trademark exclusive right, if such a trademark has not been used for three years from the date it registered unreasonably or its use had not been sustained continuously for three years unreasonably.

What Is a Famous Trademark?

According to the provisions of Paragraph 12, Article 23 of the R.O.C. Trademark Law, ¡§No application may be filed for registration of a trademark design which is: ¡K (12) Identical or similar to another person¡¦s famous mark, thus causing the public to confuse or misidentify it¡K¡¨.  What is disclosed is that the trademark design which is the same or similar to a famous trademark owned by other person cannot be approved to achieve the exclusive right of use of the trademark design.  Also disclosed is that the famous trademark design is not limited to the one which is registered or use in R.C.O.  After all, what is a famous trademark?  It is further explained in Item I, Article 31 of the Enforcement Rules of the Trademark Law that ¡§the term ¡¥famous mark¡¦ as set forth in Article 23(12) of the Law refers to a mark which is commonly recognized by the industries concerned or consumers based on the available concrete evidence.¡¨  However, the aforementioned explanation is still not enough to explain the ¡§famous trademark¡¨ owing to lacking the concrete comparisons.  The government authority, the Intellectual Property Office of the Ministry of Economic Affairs, thus, published the ¡§Critical Points for Identifying Famous Trademark or Mark¡¨ serving as the criteria for the government authority to decide whether or not a famous trademark is.  In these critical points, the manner for deciding shall be made case by case and take into consideration the following factors:

I.  The degree of the relative business or consumer to recognize or acknowledge the trademark or mark.

II.  The period, the scope and the place of the use of the trademark or mark.

III.  The promotion period, scope and place of the trademark or mark.  The promotion of the trademark or mark referred to herein includes the advertisement and propagation of the trademark or mark used for the goods or service and the display in a business exposition or exhibition thereof.

IV.  The registration, application for registration period, scope and place of the trademark or mark.  They shall be enough to reflect the degree of use or recognition thereof.

V.  The records for successfully prosecuting the right of the trademark or mark, especially those which are certified by administrative or judiciary authority to be famous.

VI.  The value of the trademark or mark.

VII.  Other factors which are enough to identify a famous trademark or mark.

The above factors can be proved by the following evidences:

I.  Data including sale invoice, sale evidence, import/export evidence and the detail in total amount of sale.

II.  Data of broadcasting medium, for example, newspaper, magazine, television and so on in R.O.C. or foreign country.

III.  Sale place, sale medium and the arrangement of the sale place of the goods or service.

IV.  Data regarding the ranking of evaluation, price-criticizing, sale amount in market, the ranking of advisement amount or business status of the trademark or mark.

V.  Data regarding the innovation or continuously use of the trademark or mark.

VI.  Documents for the registration of the trademark or mark in R.O.C. or foreign countries including the data regarding the trademark or mark registered by its relative enterprise.

VII.  Relative proof or marketing report certified by public-believable mechanisms.

VIII.  Relative certified documents issued by administrative or judiciary authority.

IX.  Other data for proving it to be a famous trademark or mark.

Accordingly, the identification of a famous trademark or mark shall be made by the government authority through the aforementioned factors and evidences.  However, what is important is in special cases that a fact that is public-known, that is, the fact that the famous trademark is sufficiently know by public, for example, Coca Cola, McDonald and so on, can be deemed as a famous trademark or mark to reject an application for registration without concrete written evidences or reports