Trade Marks 2021 Comparisons

Last Updated March 03, 2021

Law and Practice

Authors



Deep & Far Attorneys-at-Law was founded in 1992. The firm has served clients, public or private entities, foreign or domestic companies, international giants, and large-sized or small and medium-sized companies in various fields, especially all kinds of patent and trade mark matters. Highly regarded, more than 20% of the top 100 companies in Taiwan have utilised the services provided by the firm. Furthermore, more than 25% of the hi-tech companies in the Hsinchu Science Park have entrusted their works to Deep & Far. International clients include Armani, Baidu, Beckhoff, BYD, CICC, Cypress, Dr. Reddy, Infineon, InterDigital, Gleason, Grenzebach, Haribo, Intercept, Lenovo, Lupin, Motorola, MPS, NovaLed, Oppo, Piramal, Schott Glas, Sun Pharma, Torrent and Toyo Ink.

The Trademark Act governs trade marks in Taiwan.

Taiwan has had service marks and goods marks in the past, but these now fall under the umbrella of trade marks. Certification marks, collective marks and collective trade marks also exist. There is no stipulation or clear definition in the law regarding what makes a mark famous, nor is there a specific law directed to trade dress, although this is briefly provided in the Goods Labelling Act and the Fair Trade Act. Rights in trade marks are provided under statutory law, but are often better delineated by various court decisions.

Taiwan has no specific marks that are protected by statute in a way differently to ordinary marks.

Taiwan protects marks that are famous outside Taiwan but are not yet in use or registered in Taiwan.

The term of trade mark protection is ten years (Article 33(1)). The trade mark owner may renew the trade mark registration before the term expires (Article 34(1)), if the request is made within six months before the expiry of the period of registration. The request for renewal of registration may also be made within six months after the expiry of the period of registration, but the renewal fee is then doubled (Article 34(1)).

Where goods have been put on the domestic or foreign market under a registered trade mark (domestic registered trade mark) by the trade mark owner or with their consent, the trade mark owner is not entitled to claim further trade mark rights (rights to the domestic registered trade mark) for such goods, unless such claim is to prevent the condition of the goods from being changed or impaired after they have been put on the market, or if there is another reasonable ground (Article 36(2)).

There is no specific symbol that trade mark owners should use to denote that a mark is registered, but the registrant may use their desired symbol or an international symbol (eg, ®) to denote the registration (Article 35(3)). Likewise, although there is no express provision regarding TM, it can be deduced from Articles 30(1)(12) and 35(3) that registrants may assert common-law rights in the mark by use of the symbol.

No specific procedures, requirements, or restrictions apply to assigning a trade mark. The trade mark assignor and assignee can enter into a verbal or written trade mark assignment agreement. However, trade mark assignment agreements generally are made in writing.

No special requirements or restrictions are applicable to licensing a trade mark to a licensee who has no locus standi to claim against any third party, unless it is registered at the Trademark Office (Article 39(2)). Any kind of licence is permissible, but the three usual types are exclusive licence, non-exclusive licence and sole licence, which differs from an exclusive licence in that it allows use, whereas an exclusive licence does not.

The assignment of a trade mark registration (registered trade mark) needs to be recorded at the Trademark Office in order to win a locus standi against any third party. Although the assignment is effective even without official recordal, the new owner may only claim rights against the assignor assignee (Article 42). Typical risks during the gap between the assignment taking place and its official recordal are:

  • the assignor assigns the trade mark to another person again – the first assignee may not use the first assignment to claim against the second assignee if the first assignment was not recorded or registered;
  • the assignor licences the trade mark to another person – the assignee may not use the assignment to claim against the licensee if the assignment was not registered; and
  • the assignor creates a pledge of the trade mark for another person – the assignee may not use the assignment to claim against the pledgee if the assignment was not registered.

There are no other requirements that must be met for a licence or assignment to be valid.

It is possible to assign an application for a trade mark or grant a licence in relation to it during the application process. In addition, Taiwan does not distinguish between applications based on use and applications based on an intent to use.

A trade mark – including the trade mark itself, the trade mark registration and rights to the trade mark – can be given as a security or assigned by way of security (Article 44(2)). A trade mark can be the subject of a pledge (pledge of rights) (Articles 44, 45, 46(1), 92 and 93(1)(5) of the Trademark Act, and Article 900 of the Civil Code). A trade mark can be levied in execution (Articles 28(1) and 46(1)).

A trade mark registration must be obtained in order to gain exclusive rights to the trade mark, however, exclusive rights to a well-known trade mark may be acquired merely by using the trade mark. A registered, well-known trade mark is protected by trade mark law, but an unregistered well-known mark is better protected by fair trade law. Specifically, although an unregistered well-known trade mark can stop or cancel an identical trade mark registration, trade mark rights may only be enforced after registration.

Generally, a trade mark consisting of or containing a generic or descriptive term or design cannot be registered or must provide a disclaimer, unless it has obtained a secondary meaning (acquired distinctiveness). This applies to trade dress or 3D trade marks where the Intellectual Property Office asks the applicant to show its secondary meaning or acquired distinctiveness before it may be registered. There might be a slight deviation for a certification, collective mark or collective trade mark because the geographical name (name for a place of origin) serves only to certify the place of origin of the goods or services.

There is a trade mark register, which is publicly available. Different types of registers do not exist in Taiwan.

It is normal practice for large or international companies to search for prior trade marks before applying to register a trade mark, partly because the filing fees are low. Small and medium-sized companies would like the IPO to cover both the search and registration functions. Search resources include:

  • the Trademark Search System (for both earlier-filed trade marks and registered trade marks):
    1. original Chinese version;
    2. new Chinese version; and
    3. new English version; and
  • the Directory and Case Compilation of Well-known Trademarks:
    1. original Chinese version:
      1. directory and case compilation of well-known trade marks for the last five years; and
      2. Directory and case compilation of well-known trade marks for the last five years.

The term of registration is ten years. The trade mark owner may renew the registration after the term has lapsed. However, the request for renewal must be made and the fee must be paid in double within six months from the day following the date of expiry of the trade mark registration period.

Taiwan has no system of updating or refreshing registrations.

There are various requirements for registration of a trade mark, starting with the submission of an application to the Trademark Office needs a petition and trade mark specimens (see Article 19(1) of the Trademark Act).

Refusing Registration

Registration can be refused (see Articles 29(1), 29(3), 30(1) and 30(4) of the Trademark Act) on the following absolute and relative grounds:

  • the trade mark has no distinctiveness (Article 29(1));
  • a part of the trade mark has no distinctiveness, but the applicant does not make a disclaimer to that purpose (Article 29(3));
  • the trade mark is identical or similar to another person’s registered trade mark, and the designated goods or services of the trade mark are identical or similar to those of the registered trade mark, so that there is a likelihood of confusion for relevant consumers (Article 30(1)(10)); and
  • a part of the trade mark is identical or similar to another person’s registered trade mark, and the designated goods or services of the trade mark are identical or similar to those of the registered trade mark, but the applicant does not make a disclaimer to that purpose (Article 30(4)).

Applicants

Trade marks may be registered by domestic and foreign natural persons, legal persons (eg, companies, limited partnerships, corporations, foundations, associations, societies), groups (eg, businesses such as partnerships and sole proprietorships, factories, private schools, private hospitals) or government authorities/agencies (eg, the ministry of economic affairs, public schools, public hospitals).

Any domestic and foreign legal persons, groups or government authorities/agencies that are competent to certify another person’s goods or services can register a certification mark (see Article 81(1) of the Trademark Act). Any domestic and foreign associations, societies or any other groups that qualify as a legal person (corporations with legal status) may register a collective mark (see Article 85 of the Trademark Act).

Other Aspects Protected as a Trade Mark

Under Article 18(1) of the Trademark Act, words, devices, symbols, colours, three-dimensional shapes, motions, holograms, continuous patterns, odours, positions, and any combination of the above can be registered and/or protected as a trade mark.

Other Rights

The Taiwan legal system recognises other rights to signs or source-identifiers besides trade marks, such as:

  • rights to company names, Article 18(1) of the Company Act (general company names) and Article 22(1) of the Fair Trade Act (well-known company names);
  • rights to trade names (business names), Article 28(1) of the Business Registration Act (general trade names) and Article 22(1) of the Fair Trade Act (well-known trade names);
  • rights to trade dresses (eg, containers, packages or appearances of goods), Article 22(1) of the Fair Trade Act (well-known trade dresses) and Articles 4(1) and 6(1) of the Goods Labelling Act; and
  • rights to other source-identifiers (signs, symbols), contained within Article 22(1) of the Fair Trade Act (well-known source-identifiers).

Multi-class Applications

Taiwan allows multi-class applications.

Taiwan’s legal system does not have a requirement that an applicant use its mark in commerce before the registration is issued.

The registration of series trade marks is not permitted.

The trade mark office does not consider the existence of prior rights in its examination of an application for registration.

Third parties have no right to participate during the registration procedure.

It is possible to revoke, change, amend, or correct (or otherwise change) an application for a trade mark during the process of registration.

It is possible to divide a trade mark application. The applicant must submit a written request for division of the trade mark application to the trade mark office.

If the applicant provides incorrect information in connection with a trade mark application or other filing, the trade mark registration would be revoked. The trade mark office can decide such issues first.

Grounds for refusal of a trade mark registration include:

  • lack of distinctiveness (eg, generic or descriptive designs) (Article 29(1) of the trade mark Act);
  • that the mark is barely required for exercising the function of goods or services (Article 30(1)(1) of the trade mark Act);
  • that the mark is identical or similar to the national flag, the national emblem, the national seal, a military flag, a military insignia, an official seal, a medal of the Republic of China or the national flag of a foreign country, or the national emblem, national seal or national insignia of a foreign country communicated by any member of the WTO under Article 6ter(3)(b) of the Paris Convention (Article 30(1)(2) of the trade mark Act);
  • that the mark is identical to the portrait or name of Dr Sun Yat-Sen or the head of state (Article 30(1)(3) of the trade mark Act);
  • that the mark is identical or similar to the mark of a government agency of the Republic of China, an official exhibition, or an official medal or certificate (Article 30(1)(4) of the trade mark Act);
  • that the mark is identical or similar to the emblem, the flag, another insignia, the abbreviation or the name of an international intergovernmental organisation or a well-known domestic or foreign public interest institution, and is likely to mislead the public (Article 30(1)(5) of the trade mark Act) or confuse the public as to the nature, quality, place or origin of the goods or services (Article 30(1)(8) of the trade mark Act);
  • that the mark is identical or similar to a domestic or foreign national sign or hallmark for quality control or warranty, and designated to be used on identical or similar goods or services (Article 30(1)(6) of the trade mark Act);
  • that the mark violates public order or good morals (Article 30(1)(7) of the trade mark Act); and
  • that the mark is identical or similar to a geographical indication for wine or distilled spirits of the Republic of China or a foreign country, and designated to be used on goods identical or similar to wine or distilled spirits, where the foreign country and the Republic of China enter into an agreement or jointly accede to an international treaty, or reciprocally recognise the protection of geographical indication for wine or distilled spirits (Article 30(1)(9) of the trade mark Act).

Remedies against the Trademark Office decision proceed sequentially, by:

  • administrative appeal before the Ministry of Economic Affairs (within 30 days of the refusal by the Trademark Office);
  • administrative litigation before the Intellectual Property Court (within two months of the refusal by the Ministry of Economic Affairs); and
  • administrative litigation appeal before the Supreme Administrative Court (within 20 days of the refusal by the Intellectual Property Court).

Taiwan does not participate in the Madrid system.

Opposition to a trade mark registration shall be filed within three months of the date of publication of registration (Article 48(1)). The period of examination for an opposition against a trade mark registration is around five months.

The legal grounds for filing an opposition to a trade mark registration (Article 48(1)) include, in addition to those mentioned in 4.9 Refusal of Registration:

  • that the mark is identical or similar to another person’s registered trade mark or earlier filed trade mark, and is designated to be used on goods or services identical or similar to those on which the registered trade mark or earlier filed trade mark is designated to be used, and is likely to cause confusion or mistake among the relevant consumers (Article 30(1)(10));
  • that the mark is identical or similar to another person’s well-known trade mark or mark, where it is likely to cause confusion or mistake to the relevant public, or is likely to dilute the distinctiveness or reputation of the well-known trade mark or mark (Article 30(1)(11));
  • that the mark is identical or similar to another person’s earlier used trade mark and designated to be used on goods or services identical or similar to those on which the earlier used trade mark is used, where the applicant is aware of the existence of the earlier used trade mark due to contractual, geographical, business or any other relationship with the owner of the earlier used trade mark and files the application with the intent to imitate the earlier used trade mark (Article 30(1)(12));
  • that the mark contains another person’s portrait or well-known name, stage name, pseudonym or alternative name (Article 30(1)(13));
  • that the mark contains the name of a well-known legal person, business or any other group, where it is likely to cause confusion or mistake among the relevant public (Article 30(1)(14));
  • that the mark is an infringement of another person’s copyrights, patent rights or any other rights, where a final and binding judgment of the court has been rendered (Article 30(1)(15)); and
  • that using a trade mark identical or similar to the original registered device arbitrarily altered or affixed thereto a note to become identical or similar to a registered trade mark of another (Article 65(3)).

Taiwan recognises dilution as a ground to oppose a trade mark registration or to prevent use of a mark in a lawsuit.

Any person may file an opposition (Article 48(1)). Representation is not necessary for opponents or opposers who have a residence or business office in Taiwan, but opponents or opposers that do not have such residence or business place in Taiwan do require representation.

Fees for filing an opposition include an official fee of TWD4,000 per class and an attorney fee of about TWD25,000 for an average case.

The opposition procedure typically consists of:

  • filing of an opposition (by the opponent);
  • procedural examination (by the Trademark office);
  • submission of a response (by the trade mark owner);
  • substantive examination;
  • submission of a supplementary statement (by the opponent);
  • submission of a supplementary response (by the trade mark owner); and
  • the making of a decision.

Legal remedies against the decision of the Trademark Office regarding an opposition are, sequentially:

  • administrative appeal before the Ministry of Economic Affairs (within 30 days of the decision of the Trademark Office) – the period of examination is theoretically three months, subject to a discretional extension of a further three months;
  • administrative litigation before the Intellectual Property Court (within two months of the decision of the Ministry of Economic Affairs) – the period for trial is theoretically six months; and
  • administrative litigation appeal before the Supreme Administrative Court (within 20 days of the decision of the Intellectual Property Court) – the trial duration is about one year.

Trade mark registration shall not be cancelled (or revoked) on the grounds prescribed in Article 63(1)(2) of the Trademark Act if the trade mark owner has commenced or resumed the use of the trade mark before the cancellation is filed, unless such use was commenced or resumed within the three months before the cancellation is filed because the trade mark owner became aware that the cancellation would be filed (Article 63(3) of the Trademark Act). There is no statutory time period for filing cancellation actions.

Remedies available for cancellation (revocation) of a trade mark include:

  • administrative litigation before the Intellectual Property Court (IPC) within two months of receiving the decision of the Ministry of Economic Affairs, if dissatisfied with the appeal decision of the MOEA; and
  • administrative litigation appeal before the Supreme Administrative Court within 20 days of receiving the decision of the Intellectual Property Court, if dissatisfied with the decision of the IPC.

Reasons for the cancellation (revocation) of a trade mark include:

  • the trade mark is altered into a different form or supplemented with additional signs by the owner so that it is identical or similar to another person’s registered trade mark, and the goods or services for which the trade mark is used are identical or similar to those for which another person’s trade mark is designated to be used, so that it is likely to cause confusion or mistake to the relevant consumers (Article 63(1)(1) of the Trademark Act);
  • the trade mark is altered into a different form or supplemented with additional signs by a licensee so that the trade mark is identical or similar to another person’s registered trade mark, and the goods or services for which the trade mark is used are identical or similar to those for which another person’s trade mark is designated to be used, so that it is likely to cause confusion or mistake to the relevant consumers, while the owner knows or should have known the conduct of the licensee, but shows no objection thereto (Article 63(2) of the Trademark Act);
  • the trade mark owner has not used the trade mark for three years since its registration or has ceased to use the trade mark for three years after its registration without reasonable grounds for non-use, unless the trade mark has been used by a licensee (Article 63(1)(2) of the Trademark Act);
  • no appropriate distinguishing indication is added pursuant to Article 43 of the Trademark Act, unless the indication has been added before a decision of cancellation is rendered by the Trademark Office and thus there is no likelihood of confusion or mistake (Article 63(1)(3) of the Trademark Act);
  • the trade mark has become a generic mark, name or shape for the designated goods or services (Article 63(1)(4) of the Trademark Act); and
  • the actual use of the trade mark is likely to cause the public to mistake or misconceive the nature, quality or place of origin of the goods or services (Article 63(1)(5) of the Trademark Act).

Any person may file a cancellation/revocation, and the Trademark Office may also initiate cancellation proceedings ex officio (Article 63(1) of the Trademark Act). There are no particular admissibility (standing) requirements (eg, legal or commercial interest) for initiating cancellation proceedings in Taiwan.

Cancellation/revocation actions can be brought before the Trademark Office (Article 63(1) of the Trademark Act). They cannot be brought before IP courts or civil courts.

A partial cancellation/revocation is possible (Article 63(4) of the Trademark Act). Specifically, where grounds for cancellation exist only in respect of some of the designated goods or services of the registered trade mark, the registration may be cancelled in respect of those goods or services (Article 63(4) of the Trademark Act).

Amendments are possible in cancellation/revocation proceedings, under certain circumstances.

For the trade mark device, no amendments shall be made to the design or device after the trademark has been registered (Article 38(1) of the Trademark Act), therefore, amendments to the design or device of the trademark are also not possible in cancellation proceedings.

For goods or services, no amendments shall be made to the designated goods or services after the trademark has been registered, unless such amendment is a restriction of the designated goods or services (Article 38(1) of the Trademark Act). Therefore, amendments to goods or services are possible in cancellation proceedings, if it is a restriction of the designated goods or services requested before a decision for the cancellation proceedings is rendered (Article 38(2) of the Trademark Act).

The owner of a registered trade mark may request the Trademark Office to divide the registration into two or more registrations by distributing the designated goods or services included in the original registration among divisional registrations (Article 37 of the Trademark Act). This shall be requested before a decision for the cancellation proceedings is rendered (Article 38(2) of the Trademark Act).

Trade mark cancellation/revocation actions and trade mark infringement actions are not heard together, with the former being heard by the Trademark Office, and the latter by the court (the IP Court, in principle). Nevertheless, the alleged infringer may defend that the trade mark registration of the trade mark owner shall be cancelled, and file a cancellation against the trade mark registration with the Trademark Office at the same time. The court, however, shall decide on the alleged infringer’s defence by itself. Specifically, it does not need to suspend the action, and the decision of the Trademark Office is also not binding on it (Article 16(1) of the Intellectual Property Case Adjudication Act).

The court may render a judgment in the infringement action either before or after the Trademark Office renders a decision in the cancellation action. It does not need to suspend the action and wait for the decision of the Trademark Office, and may also deliver its own viewpoints or reasons.

Since the court’s opinions in a judgment in the infringement action are an important reference or guidance of the Trademark Office, while a decision on the cancellation action of the Trademark Office might only be taken into consideration by the court, if the judgment and Office decision have overlapping issues related to grounds for cancellation, the Office decision always comes out after the judgment.

The Trademark Act requires trade mark claims to be brought within two years from the date on which the trademark owner becomes aware of the trade mark infringement and the person liable for the trade mark infringement.  However, trade mark claims may not be brought after ten years from the time of the trade mark infringement.

For the owner of a registered trade mark, actions available to pursue infringement include to demand:

  • a person who infringes trade-mark rights to stop such infringement (Article 69(1));
  • the prevention of infringement (Article 69(1));
  • the destruction of infringing articles and the materials or implements used in infringing the trade mark rights (Article 69(2));
  • the payment of damages (Article 69(3)); and/or
  • to request Customs to seize articles that are suspected of infringing trade mark rights (Article 72(1)).

For the owner of an unregistered well-known trade mark, actions available to pursue infringement include to demand:

  • a person who infringes trade-mark rights to stop such infringement (Article 29 of the Fair Trade Act);
  • the prevention of infringement (see Article 29 of the Fair Trade Act);
  • they payment of damages (Article 30 of the Fair Trade Act); and
  • the payment of punitive damages, which may not exceed three times the amount of damages that are proven (Article 31 of the Fair Trade Act).

The owner of an unregistered general trade mark has no trade mark rights under the trade mark law or the fair-trade law, so no actions are available to pursue the use of its trade mark by another person.

The necessary parties to an action for infringement are:

  • when there are no trade mark licences, the trade mark-owner and the alleged infringer;
  • when there is one or more non-exclusive licences, the trade mark-owner, the non-exclusive licensee(s) and the alleged infringer;
  • when there is one exclusive licence, the exclusive licensee and the alleged infringer;
  • when there is one or more prior non-exclusive licences (by the trade mark owner) and one later exclusive licence (by the trade mark owner), the non-exclusive licensee(s), the exclusive licensee and the alleged infringer; and
  • when there is one prior exclusive licence (by the trade mark-owner) and one or more later non-exclusive licences (by the exclusive licensee), the exclusive licensee, the non-exclusive licensee(s) and the alleged infringer.

The circumstances in which a third party who is not the trade mark owner can file an action for infringement include:

  • when there are no trade mark licences – it is not possible for a non-licensee to file an action for infringement under any circumstances;
  • when there is one or more non-exclusive licences – a non-exclusive licensee must file an action for infringement jointly with the trade mark-owner (and the other non-exclusive licensees);
  • when there is one exclusive licence – it is possible for the exclusive licensee to file an action for infringement independently;
  • when there is one or more prior non-exclusive licence (by the trade mark-owner) and one later exclusive licence (by the trade mark-owner) – a non-exclusive licensee must file an action for infringement jointly with the exclusive licensee (and the other non-exclusive licensees), and it is possible for the exclusive licensee to have a joint action with the non-exclusive licensee(s); and
  • when there is one prior exclusive licence (by the trade mark owner) and one or more later non-exclusive licence (by the exclusive licensee) – it is possible for the exclusive licensee and a non-exclusive licensee to file an action for infringement jointly, while it is required for the non-exclusive licensee(s) to have a joint action with the exclusive licensee.

Within the scope of the licence, a licensee (exclusive or non-exclusive) may file an action for infringement in its own name when its trade mark rights (exclusive rights) are infringed (Article 39(4) of the Trademark Act). It is not possible for a trade mark owner to take any action to stop infringement before its trade mark is registered, unless the trade mark is well-known.

The Taiwan legal system generally permits representative or collective actions (such as class actions), including in trade mark proceedings. Multiple parties that have common interests may appoint one or more persons from themselves to sue or to be sued in the interests of appointing and appointed parties (Article 41(1) of the Code of Civil Procedure and Article 1 of the Intellectual Property Case Adjudication Act).

Disputes arising from property rights (including trade mark rights) where the amount or value of the disputed subject is less than TWD500,000 shall be subject to mediation by court before an action is initiated (Article 403(1)(11) of the Code of Civil Procedure). Formal demand letters or warning letters are popular, but are not formally required.

To initiate an action, a complaint submitted to the court must state specific details, including:

  • the parties and their statutory agents;
  • the subject-matter and its cause and facts; and
  • the claim subject to decision (Article 244(1) of the Code of Civil Procedure and Article 1 of the Intellectual Property Case Adjudication Act).

The complaint shall be plausible (Articles 249(3), 449bis and 502(2) of the Code of Civil Procedure). There are no special provisions for trade-mark litigation proceedings that differ from those for non-intellectual property litigation proceedings. It is possible to supplement pleadings with additional arguments. Whenever the presiding judge considers that the preparation for oral argument has not been completed, they may order the parties to submit a supplementary pleading or response of full details within a specified period of time, and may also order them to state or declare in detail the evidence used for a specific matter (Article 268 of the Code of Civil Procedure and Article 1 of the Intellectual Property Case Adjudication Act).

Various courts that have jurisdiction to hear trade mark matters.

Civil Litigation

  • First instance – the Intellectual Property Court (see Article 3(1) of the Intellectual Property Court Organization Act) or regular or consensual district court (Article 24 of the Code of Civil Procedure);
  • second instance – the Intellectual Property Court (Article 3(1) of the Intellectual Property Court Organization Act) or regular higher court of the regular or consensual district court; and
  • third instance – the Supreme Court (Article 20 of the Intellectual Property Case Adjudication Act).

Criminal Litigation

  • First instance – the District Court (Article 23 of the Intellectual Property Case Adjudication Act);
  • second instance – the Intellectual Property Court (Articles 25(1) and 25(2) of the Intellectual Property Case Adjudication Act) or collegiate bench of the District Court (Article 455bis(1), Code of Criminal Procedure); and
  • third instance – the Supreme Court (Article 26 of the Intellectual Property Case Adjudication Act).

Administrative Litigation

  • First instance – the Intellectual Property Court (Article 3(3) of the Intellectual Property Court Organization Act); and
  • second instance – the Supreme Administrative Court (Article 32 of the Intellectual Property Case Adjudication Act).

Special provisions concerning the appellate procedure for trade mark proceedings mainly involve the jurisdiction. The courts with jurisdiction to hear an appeal in trade mark proceedings are as follows.

For civil litigation

  • Second instance (first appeal) – the Intellectual Property Court (Article 3(1) of the Intellectual Property Court Organization Act, and Article 19 of the Intellectual Property Case Adjudication Act); and
  • third instance (second appeal) – the Supreme Court (Article 20 of the Intellectual Property Case Adjudication Act).

For criminal litigation

  • Second instance (first appeal) – the Intellectual Property Court (Article 3(2) of the Intellectual Property Court Organization Act, and Article 25(1) of the Intellectual Property Case Adjudication Act) or collegiate bench of the District Court (Article 455bis(1) of the Code of Criminal Procedure, and Article 1 of the Intellectual Property Case Adjudication Act); and
  • third instance (second appeal) – the Supreme Court (Article 26 of the Intellectual Property Case Adjudication Act).

For administrative litigation

  • Second instance (appeal) – the Supreme Administrative Court (Article 32 of the Intellectual Property Case Adjudication Act).

Decisions of the Trademark Office are not binding on the courts trying an infringement action (Article 16(1) of the Intellectual Property Case Adjudication Act). For example, when the trade mark-owner (plaintiff) initiates a trade-mark infringement action before the Intellectual Property Court and the alleged infringer (defendant) files an opposition or invalidation against the registration of the plaintiff’s trade mark, the Trademark Office's decision to revoke or invalidate the trade mark registration based on the similarity of trade marks and similarity of goods or services before the Intellectual Property Court renders that a judgment on the infringement action is not binding on the Intellectual Property Court.

The Intellectual Property Court may still find that the plaintiff’s trade mark is not similar to another person’s registered trade mark, or that the designated goods or services of the plaintiff’s trade mark are not similar to those of another person’s registered trade mark, so that the registration of the plaintiff’s trade mark shall not be revoked or invalidated.

A potential defendant may institute declaratory judgment proceedings – ie, an action for a declaratory judgment confirming the non-existence of claims regarding trade mark infringement – in order to protect itself. The trade mark owner may petition to submit a bond for a provisional attachment or injunction, normally in the amount of one third of its claim, while the defendant may petition to lift off the provisional attachment or injunction by submitting a counter bond, normally in the full amount of the claim.

There are no special procedures, remedies, or statutes addressing counterfeit marks.

The special procedural provisions for trade mark proceedings are:

  • for civil litigation, Articles 6-22 of the Intellectual Property Case Adjudication Act expressly exclude the application of some articles in the Code of Civil Procedure, but clearly provide the confidentiality protective order;
  • for criminal litigation, Articles 23-30 of the Intellectual Property Case Adjudication Act mainly provide for the venue of a case; and
  • for administrative litigation, Articles 31bis to 34 of the Intellectual Property Case Adjudication Act provide venue and how to deal with new evidence on the same cancellation or revocation grounds.

While it is not necessary for the plaintiff to establish that the defendant has used the sign as a trade mark, it is possible for the defendant to establish that it has not used the sign as a trade mark (eg, purely descriptive use). The burden of proof rests on the defendant (Articles 36(1)(1) and 36(1)(2)).

The main factors to be considered in determining whether the use of a sign constitutes trade mark infringement (ie, where it is likely to cause confusion or mistakes among the relevant consumers) include:

  • the degree of distinctiveness of the registered trade mark and the used sign;
  • the degree of similarity between the registered trade mark and the used sign;
  • the degree of similarity between the designated goods or services of the registered trade mark and the goods or services on which the sign is used;
  • the degree of business diversification of the owner of the registered trade mark;
  • actual cases of confusion or mistake;
  • the degree of familiarity of the relevant consumers with the registered trade mark and the used sign; and
  • whether the use of the sign is in good faith.

No other trade mark claims may be brought in Taiwan.

When a trade mark owner holds a registration, it is presumed that the trade mark owner has trade mark rights.

The main defences against trade mark infringement include:

  • limitation of trade mark rights (eg, use of own name, descriptive use, functional use, prior use in good faith or exhaustion of trade mark rights) (Article 36 of the Trademark Act);
  • grounds for opposition (Article 48(1) of the Trademark Act);
  • grounds for invalidation (Article 57(1) of the Trademark Act);
  • grounds for cancellation (eg, non-use) (Article 63(1) of the Trademark Act);
  • forfeiture of trade mark rights (eg, expiry of registration period or abandonment of trade mark registration) (Articles 33 and 45 of the Trademark Act);
  • prohibition of deceptive or obviously unfair conducts (Article 25 of the Fair Trade Act); and
  • prohibition of abuse of rights (Article 148 of the Civil Code).

Under the Taiwan legal system, a party to a trade mark matter can obtain relevant information and evidence from the other party or a third party by way of perpetuation of evidence. Specifically, whenever it is likely that evidence may be destroyed or that its use in court may become difficult, or with the consent of the opposite party, the party may move the court for perpetuation of such evidence.

Where necessary, the party who has legal interests in ascertaining the status quo of a matter or object may move for expert testimony, inspection or perpetuation of documentary evidence (Article 368(1) of the Code of Civil Procedure, and Article 1 of the Intellectual Property Case Adjudication Act).

Where no action on the merits has been initiated, a motion for perpetuation of evidence shall be made before the court where the action is to be brought. Where the action has been initiated, such a motion shall be made before the court where the action is pending (Article 18(1) of the Intellectual Property Case Adjudication Act).

Expert testimony and/or surveys are permissible as evidence in actions, including trade mark actions. In making a judgment, and taking into consideration the entire import of the oral argument and the result of evidence investigation, the court shall determine the facts by discretional evaluation (Article 222(1) of the Code of Civil Procedure). Expert testimony and surveys as evidence shall be investigated in the proceedings and taken into consideration by the court when making a judgment, but are not binding on the court.

Trade mark infringement is a criminal offence in Taiwan (Articles 95-97 of the Trademark Act). It may arguably constitute an administrative offence before the Fair Trade Commission (FTC), so that the trademark owner may petition the FTC to require the offender to affix a distinguishing indication in order to avoid the likelihood of confusion regarding the origin of goods or services (Article 22(4) of the Fair Trade Act). A criminal procedure for a trade mark infringement offence typically includes:

  • the trade mark owner files a complaint with a judicial police officer;
  • the judicial police officer sends the result of their investigation to a public prosecutor;
  • the public prosecutor initiates a public prosecution with a district court;
  • the district court hands down a judgment of guilty;
  • the accused (alleged infringer) appeals to the Intellectual Property Court;
  • the Intellectual Property Court refuses the appeal of the accused;
  • the accused appeals to the Supreme Court; and
  • the Supreme Court refuses the appeal of the accused.

Typical costs for bringing an infringement action to conclusion in the first instance include court fees for the first instance of civil litigation (eg, trade mark infringement action), which can be calculated by using a calculating programme.

Because there are no discovery proceedings, attorney fees are relatively small compared to the major industrial countries. For an average case, attorney fees can be kept under USD30,000. Since the politicians always keep the country going in wrong directions so as to have an over-saturated domestic legal market, quite a few cases are handled for each instance under TWD80,000.

The losing party is responsible for paying court fees (Article 78 of the Code of Civil Procedure). The parties are responsible for paying their own attorney fees; specifically, the losing party is not required to reimburse the prevailing party for their attorney fees.

Interim or preliminary injunctions are available, and include provisional attachments, provisional injunctions and injunctions maintaining a temporary status quo.

The requirements of interim or preliminary injunctions are as follows.

Provisional Attachments

For provisional attachments, a creditor may apply for a provisional attachment with regard to a monetary claim or a claim changeable into a monetary claim for the purpose of securing satisfaction of a compulsory execution (Article 522(1) of the Code of Civil Procedure). No provisional attachment shall be granted unless it is impossible or extremely difficult to satisfy the claim by a compulsory execution in the future (Article 523(1) of the Code of Civil Procedure).

Provisional Injunctions

For provisional injunctions, a creditor may apply for a provisional injunction with regard to non-monetary claims for the purpose of securing satisfaction of a compulsory execution (Article 532(1) of the Code of Civil Procedure). No provisional injunction shall be granted unless it is impossible or extremely difficult to satisfy the claim by a compulsory execution in the future due to a change in the status quo of the claimed subject (Article 532(2) of the Code of Civil Procedure).

Injunctions Maintaining a Temporary Status Quo

For injunctions maintaining a temporary status quo, wherever necessary for the purpose of preventing material harm, imminent danger or other similar circumstances, an application may be made for an injunction maintaining a temporary status quo with regard to the disputed legal relationship (Article 538(1) of the Code of Civil Procedure). A ruling for an injunction maintaining a temporary status quo may only be issued where the disputed legal relationship may be ascertained in an action on the merits (Article 538(2) of the Code of Civil Procedure).

Taiwan permits monetary remedies.

Taiwan permits a remedy of impoundment or destruction of infringing products.

Because there are no discovery proceedings, attorney fees are relatively small compared to the major industrial countries. For an average case, attorney fees can be kept under USD30,000. Since the politicians always keep the country going in wrong directions so as to have an over-saturated domestic legal market, quite a few cases are handled for each instance under TWD80,000.

The losing party is responsible for paying court fees (Article 78 of the Code of Civil Procedure). The parties are responsible for paying their own attorney fees; specifically, the losing party is not required to reimburse the prevailing party for their attorney fees.

A trade mark owner can not seek relief without notice to the defendant. The court will issue an official notice to the other party under all circumstances.

Generally, a prevailing defendant does not have any rights or remedies, such as being reimbursed for attorneys’ fees. The court decision will make non-infringement clear in the decision, but is not likely to order declaration of non-infringement in any other medium.

The Taiwan legal system provides for customs seizure of counterfeits but not parallel imports. The import or export of counterfeits is illegal anyway under Taiwanese trade mark law, but parallel import is legal due to the international exhaustion of trade mark rights under Taiwanese trade mark law (Article 36(2) of the Trademark Act). The customs seizure procedure for counterfeits typically includes:

  • Customs finds that the imported or exported articles are likely to be counterfeits (infringing articles);
  • Customs gives a notice to the trademark owner or its representative or agent in Taiwan, requesting that it travels to Customs for identification. Customs gives a notice to the importer or exporter at the same time, and requests the provision of relevant evidence of non-infringement;
  • the trade mark owner identifies the articles as counterfeits and provides relevant evidence of infringement;
  • the importer or exporter provides relevant evidence of non-infringement;
  • the trade mark owner files an application for seizure of the articles with Customs;
  • Customs seizes the articles; and
  • the trade mark owner brings a trade mark infringement action before the Intellectual Property Court and gives notice to Customs.

There are no different types of remedies for different types of trade marks.

The defendant may always settle the case before the case is decided. The defendants can present themselves at any time through their own strategic reasoning, and shall present when the court tries or considers it necessary for settlement (Article 378 of the Code of Civil Procedure). The court may seek settlement at any time irrespective of which phase the proceedings have reached, with either a commissioned judge or an assigned judge being authorised to do so (Article 377(1) of the Code of Civil Procedure).

Where both parties are close to agreeing terms for a settlement, they may move the court, the commissioned judge or the assigned judge to make a settlement proposal within the scope specified by the parties (Article 377bis(1) of the Code of Civil Procedure).

Alternative dispute resolution is compulsory for some disputes (Article 403 of the Code of Civil Proceedings), but it is neither a common nor compulsory element of settling a trade mark case in Taiwan, although parties or the court may make an effort to do so.

Other court proceedings (eg, administrative litigation proceedings for opposition, invalidation or cancellation before the IP Court) have no influence on the current court proceedings (eg, infringement proceedings before the IP Court). The court trying the infringement case may determine by itself whether a trade mark registration shall be revoked, invalidated or cancelled, and need not suspend the infringement action and wait for the judgment of the court trying the opposition, invalidation or cancellation case (Article 16(1) of the Intellectual Property Case Adjudication Act). Nevertheless, if both proceedings are pending before the IP Court, it tends to deliver harmonised reasoning.

The first appeal (second instance) normally takes between six months and one year, and the second appeal (third instance) normally takes about one year.

Special provisions concerning the appellate procedure for trade mark proceedings mainly involve the jurisdiction. The courts with jurisdiction to hear an appeal in trade mark proceedings are as follows.

Civil Litigation

  • Second instance (first appeal) – the Intellectual Property Court (Article 3(1) of the Intellectual Property Court Organization Act, and Article 19 of the Intellectual Property Case Adjudication Act); and
  • third instance (second appeal) – the Supreme Court (Article 20 of the Intellectual Property Case Adjudication Act).

Criminal Litigation

  • Second instance (first appeal) – the Intellectual Property Court (Article 3(2) of the Intellectual Property Court Organization Act, and Article 25(1) of the Intellectual Property Case Adjudication Act) or collegiate bench of the District Court (Article 455bis(1) of the Code of Criminal Procedure, and Article 1 of the Intellectual Property Case Adjudication Act); and
  • third instance (second appeal) – the Supreme Court (Article 26 of the Intellectual Property Case Adjudication Act).

Cdministrative Litigation

  • Second instance (appeal) – the Supreme Administrative Court (Article 32 of the Intellectual Property Case Adjudication Act).

For civil cases, there are both factual and legal reviews in the second instance (first appeal), and it is a kind of successive instance. Specifically, the parties may present additional means of attack or defence, including additional arguments or defences, additional facts or additional evidence. The appellate court, however, does not review evidence that was presented and investigated in the first instance; nor does it review arguments, defences or facts that were presented and investigated in the first instance, if no additional evidence is presented in the second instance (Article 447(1) of the Code of Civil Procedure, and Article 1 of the Intellectual Property Case Adjudication Act). In the third instance (second appeal), there is only legal review.

There are also both factual and legal reviews in the second instance (first appeal) in criminal cases, and it is a kind of repetitive instance. Specifically, the parties may present additional means of attack or defence, including additional arguments or defences, additional facts or additional evidence. The appellate court also reviews arguments or defences, facts or evidence that were presented and investigated in the first instance (Article 364 of the Code of Criminal Procedure, and Article 1 of the Intellectual Property Case Adjudication Act). In the third instance (second appeal), there is only legal review.

For administrative litigation, there is only legal review in the second instance (appeal).

A trade mark can also be protected by copyright (eg, in the case of a logo) or patent (eg, design patent). A trade mark is conceptually a special trade dress.

A trade mark also be protected by industrial design laws (eg, design patents or trade dress).

Rights of publicity or personality do not interact with trade mark rights in Taiwan.

Taiwan has Fair Trade Act, which affects trade marks.

This is not applicable in Taiwan.

This is not applicable in Taiwan.

This is not applicable in Taiwan.

Deep & Far Attorneys-at-Law

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Taiwan
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+886 2 258 566 88

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email@deepnfar.com.tw www.deepnfar.com.tw
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Law and Practice in Taiwan

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Deep & Far Attorneys-at-Law was founded in 1992. The firm has served clients, public or private entities, foreign or domestic companies, international giants, and large-sized or small and medium-sized companies in various fields, especially all kinds of patent and trade mark matters. Highly regarded, more than 20% of the top 100 companies in Taiwan have utilised the services provided by the firm. Furthermore, more than 25% of the hi-tech companies in the Hsinchu Science Park have entrusted their works to Deep & Far. International clients include Armani, Baidu, Beckhoff, BYD, CICC, Cypress, Dr. Reddy, Infineon, InterDigital, Gleason, Grenzebach, Haribo, Intercept, Lenovo, Lupin, Motorola, MPS, NovaLed, Oppo, Piramal, Schott Glas, Sun Pharma, Torrent and Toyo Ink.