The Trademark Act governs trade marks in Taiwan.

Taiwan is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

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.

Under Article 18(1) of the Trademark Act, the following (or any combination thereof) can be registered and/or protected as a trade mark:

• words;
• devices;
• symbols;
• colours;
• three-dimensional shapes;
• motions;
• holograms;
• continuous patterns;
• odours; and
• positions.

Generally, a trade mark consisting of, or containing, a generic or a descriptive term or design cannot be registered. In principle, a trade mark containing a generic or a descriptive term or design can be registered only if a disclaimer is made by the applicant. In addition, a trade mark consisting of, or containing, a descriptive term or design can also be registered if the descriptive term or design has obtained a secondary meaning (acquired distinctiveness).

Under Article 35 of the Trademark Act, the proprietor of a registered trade mark has the exclusive right in the trade mark in relation to the designated goods or services. Unless otherwise prescribed in Article 36 of this Act, consent of the proprietor of a registered trade mark shall be required in any of the following:

• using a trade mark that is identical with the registered trade mark in relation to goods or services that are identical with those for which it is registered;
• using a trade mark that is identical with the registered trade mark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion among relevant consumers; or
• using a trade mark that is similar to the registered trade mark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion among relevant consumers.

A trade mark may, if registered, be displayed with the words “registered trademark” or the internationally used symbol for registration (the letter R enclosed within a circle).

Under Article 5 of the Trademark Act, “use of a trademark” means any of the following acts, in the course of trade, where such trade mark is capable of being recognised by relevant consumers as a trade mark:

• to apply a trade mark to goods or packaging or containers thereof;
• to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
• to apply a trademark to articles relating to the provision of services; or
• to apply a trademark to commercial documents or advertisements relating to goods or services.

The preceding paragraph shall also apply to acts performed by digital audiovisual means, through electronic media, on the internet, or through other media.

It is necessary to establish that the defendant has used the sign as a trade mark, in contrast to a purely descriptive use.

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) of the Trademark Act). 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.

A trade mark can also be protected by copyright or related rights (eg, in the case of logos). If a trade mark is a surname, the trade mark can also be protected by name right.

Under Article 5 of the Copyright Act, for the purposes of this act, “works” shall include the following:

• oral and literary works;
• musical works;
• dramatic and choreographic works;
• artistic works;
• photographic works;
• pictorial and graphical works;
• audiovisual works;
• sound recordings;
• architectural works; and
• computer programs.

The requirements for copyright to subsist in a work are generally as follows:

• a creation of the human spirit;
• a creation having originality or being an independent creation with at least some minimal degree of creativity;
• a creation having a specific expression; and
• a creation presenting individuality of the author within a literary, scientific, artistic or other spiritual domain.

These elements apply to all works of art.

The author is the person who creates the copyrightable work (Article 3(1)(II), Copyright Act), and is normally the first owner of copyright (Article 10, Copyright Act). Where a person’s name or a pseudonym familiar to the public is represented in a normal way as the author on the original of a work, or on a published copy of the work, or in connection with a public release of a work, the person shall be presumed to be the author of the work (Article 13(1), Copyright Act).

A joint work is a work that has been completed by two or more persons where the creation of each person cannot be separately exploited (Article 8, Copyright Act). In other words, when the creation of more than one person on a work may be separately exploited, the work may not be a joint work but a set of different works.

Moral rights in a joint work may not be exercised without the consent of all the joint authors. A joint author shall not refuse consent without a legitimate reason (paragraph 1). Authors of a joint work may select an author from among the joint authors to be their representative for the purpose of exercising moral rights (paragraph 2). Limitations imposed on the representative powers of the representative referred to in the preceding paragraph shall not be effective against a third party acting in good faith (paragraph 3) (Article 19, Copyright Act).

In the case of a joint work, each author’s share of the ownership of such a work shall be as stipulated by the joint authors; where no stipulation has been made, ownership shares shall be determined according to the degree of each author’s creative contribution. Where the degree of each author’s creative contribution is not clear, it shall be presumed that each author owns an equal share (paragraph 1). Where an author of a joint work abandons its share of the ownership of the work, that share shall be apportioned among the other joint authors in proportion to their respective shares (paragraph 2). The provisions of the preceding paragraph shall apply mutatis mutandis where the author of a joint work dies with no successor or is extinguished with no receiver (paragraph 3) (Article 40, Copyright Act).

A corporate body can be the author of a work. For example, when a work is completed by an employee within the scope of employment, if an agreement stipulates that the employer is the author, this agreement shall govern. In addition, when a work is completed by a person under commission, if an agreement stipulates that the commissioning party is the author, this agreement shall also govern.

Where a work is completed by an employee within the scope of employment, such employee is the author of the work; provided, where an agreement stipulates that the employer is the author, such agreement shall govern (paragraph 1). Where the employee is the author of a work pursuant to the provisions of the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; provided, where an agreement stipulates that the economic rights shall be enjoyed by the employee, such agreement shall govern (paragraph 2). The term “employee” in the preceding two paragraphs includes civil servants (paragraph 3) (Article 11, Copyright Act).

Where a work is completed by a person under commission, except in the circumstances set out in the preceding article, such commissioned person is the author of the work; provided, where an agreement stipulates that the commissioning party is the author, such agreement shall govern (paragraph 1). Where the commissioned person is the author pursuant to the provisions of the preceding paragraph, enjoyment of the economic rights to such work shall be assigned through contractual stipulation to either the commissioning party or the commissioned person. Where no stipulation regarding the enjoyment of economic rights has been made, the economic rights shall be enjoyed by the commissioned person (paragraph 2). Where the economic rights are enjoyed by the commissioned person pursuant to the provisions of the preceding paragraph, the commissioning party may exploit the work (paragraph 3) (Article 12, Copyright Act).

Authors have the exclusive right to reproduce, distribute, publicly broadcast, publicly transmit and rent their works. Authors of oral and literary works have the exclusive right to recite their works publicly. Authors of audiovisual works have the exclusive right to present their works publicly. Authors of oral and literary, musical and dramatic/choreographic works have the exclusive right to perform their works publicly. Authors may claim payment of remuneration for use from the persons who publicly performed a sound recording. Authors of unpublished fine arts or photographic works have the exclusive right to display the original and copies of their works publicly. Authors of works have the exclusive right to adapt their works into derivative works or to compile their works into compilation works. Performers have the exclusive right to reproduce their performances by means of sound recording, video recording or photography. Performers have the exclusive right to distribute, transmit publicly and rent their performances reproduced in sound recordings. Performers have the exclusive right, by means of loudspeakers or other equipment, to perform their performances publicly; however, this shall not apply to public performances of a performance by means of loudspeakers or other equipment after that performance has been reproduced or broadcast publicly.

Just as categories for works under Article 5(1) are merely exemplary, the above is a comprehensive list of economic rights established by law under Article 22(1) stipulating that “the author exclusively enjoys the rights of reproducing its work unless otherwise provided in this Act”, which means that the author exclusively enjoys the rights of reproducing their work in whatever sort, medium or channel unless expressly limited or provided in the Act. Accordingly, new rights that are not currently listed in the law but may arise due to technological progress will certainly be vested in the author automatically.

Moral rights include the rights to:

• release the work publicly;
• indicate its name, a pseudonym, or no name on original or copies of the work, or when the work is publicly released; or
• prohibit others from distorting, splitting, tampering or otherwise changing the content, form or name of the work, thereby damaging the author’s reputation.

The list above is a comprehensive list established by law (Article 17, Copyright Act).

Even though an author has died or been extinguished, the protection of moral rights shall be valid as if the author is living or in existence and shall not be infringed upon by any person. That is, the moral rights will last forever in any case.

Moral rights belong exclusively to the author and are not alienable (Article 21, Copyright Act).

Economic rights generally last for the life of the author and 50 years after their death. If a work is first publicly released between the fortieth and fiftieth years after the author’s death, the economic rights shall last for a term of ten years beginning from the time of the public release. The economic rights in a work authored by a juristic person last for 50 years after the public release thereof, but if the work is not publicly released within 50 years from completion of the creation, the economic rights shall subsist for 50 years after completion of the creation.

In addition, the economic rights for photographic works, audiovisual works, sound recordings and performances last for 50 years after the public release of the work. Similarly to the case of a juristic person, however, if the work is not publicly released within 50 years from completion of the creation, the economic rights shall subsist for 50 years after completion of the creation.

Moral rights belong exclusively to the author and are not transmissible upon death.

A compilation work is a work formed by the creative selection and arrangement of materials, and shall be protected as an independent work (paragraph 1). Protection of a compilation work shall not affect the copyright in the work from which the material was selected and arranged (paragraph 2) (Article 7, Copyright Act).

No registration or formal requirements are required for copyright protection.

Although not mandatory, copyright registration in Taiwan can be helpful for establishing proof of ownership. In case of disputes, having a registered copyright can simplify the process of proving ownership and the date of creation. The Taiwan Development & Research Academia of Economic and Technology (TEDR) may accept records of works for filing, which can serve as evidence of ownership. Work can be certified by a notary public or a civilian notary public as a way to establish proof of ownership.

Examples of works are listed in 3.1 Types of Copyrightable Works.

Rights subject to registration are as follows:

• authorship;
• copyright ownership;
• assignment or inheritance of copyright ownership;
• copyright licensing for rental, publication, and broadcasting; and
• pledge of copyright ownership.

Non-public registration of copyright ownership applies in relation to the following:

• protection of trade secrets; and
• protection of secrets related to production, sales, business operations, technologies, methods, processes, formulas, and programs.

The Registration Procedure

Receipt and case filing

The applicant commissions a copyright agent recognised by the Association to handle the notarised registration. Once the Association receives the notarisation materials sent by the agent, the case will be immediately filed and registered.

Fee verification

The Association staff will verify whether the applicable fees have been fully paid. If everything is in order, the case proceeds to preliminary review. If there is any deficiency, the agent will be notified to make the necessary payment before the case can enter preliminary review.

Preliminary review

Upon filing, a preliminary review will be conducted. The outcomes are as follows.

• Approved – If the case passes the preliminary review, it will proceed to the secondary review stage.
• Not approved – If the case fails the preliminary review, the Association will return the case. The agent must make the necessary corrections according to the return notice and resubmit the materials, after which the case will re-enter the preliminary review process.

Secondary review

If the case passes the preliminary review, it will proceed to the secondary review stage. The outcomes are as follows.

• Approved – If the case passes the secondary review, the Association will proceed to register it and issue a notarised registration certificate.
• Not approved – If the case fails the secondary review, the review committee will convene a meeting with the preliminary reviewers to discuss the reason for rejection. The case will be returned, and the agent must make the necessary corrections according to the return notice. After resubmission, the case will re-enter the preliminary review process.

Registration and issuance of notarised registration certificate

The case will be registered using the Association’s coding system, and the production of the notarised registration certificate will commence.

Mailing of notarised registration certificate

The notarised registration certificate and the receipt will be sent together to the respective agent.

Filing and archiving

The registration data will be filed, separated into two folders, and archived in different locations for safekeeping.

The Required Documents

The following documents are required:

• application form (available online or at the Taiwan Intellectual Property Office (TIPO));
• copy of the work (eg, manuscript, software, photos);
• proof of identity of the applicant;
• assignment or employment contract, if applicable; and
• power of attorney, if filed by an agent.

If the registration fee is not paid or the required documents are not provided, the registration of a copyright can be refused by the copyright registration institution. The applicant cannot appeal a refusal of registration.

A copyright can also be protected by trade mark or related rights.

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 Intellectual Property Office to cover both the search and registration functions. Search resources include the following.

• The Trademark Search System (for both earlier filed trade marks and registered trade marks):
1. an original Chinese version;
2. a new Chinese version; and
3. a new English version.
• The Directory and Case Compilation of Well-Known Trademarks:
1. an original Chinese version.

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 as a doubled amount within six months from the day following the date of expiry of the trade mark registration period.

There are various requirements for registration of a trade mark, including a petition, drawing of the mark, and designation of goods or services (see Article 19(1) of the Trademark Act).

The Taiwanese legal system allows multi-class trade mark applications. The filing fee for a trade mark application is TWD3,000 per class.

Individuals, legal entities and trade bodies can register a trade mark. Foreign applicants are required to appoint and be represented by an attorney licensed to practise in Taiwan.

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

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

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.

Absolute grounds for refusal of a trade mark registration include the following:

• lack of distinctiveness (eg, generic or descriptive designs) (Article 29(1), Trademark Act);

• the mark is barely required for exercising the function of goods or services (Article 30(1)(1), Trademark Act);

• 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), Trademark Act);
• the mark is identical to the portrait or name of Dr Sun Yat-Sen or the head of state (Article 30(1)(3), Trademark Act);
• 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), Trademark Act);
• 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), Trademark Act) or confuse the public as to the nature, quality or place of origin of the goods or services (Article 30(1)(8), Trademark Act);
• 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), Trademark Act);
• the mark violates public order or good morals (Article 30(1)(7) of the Trademark Act); and
• 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), Trademark Act).

Generally, a trade mark consisting of, or containing, a generic or a descriptive term or design cannot be registered. In principle, a trade mark containing a generic or a descriptive term or design can be registered only if a disclaimer is made by the applicant. In addition, a trade mark consisting of, or containing, a descriptive term or design can also be registered if the descriptive term or design has obtained a secondary meaning (acquired distinctiveness).

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), Trademark Act). The period of examination for an opposition against a trade mark registration is around five months.

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), Trademark Act). There is no statutory time period for filing cancellation actions.

The legal grounds for filing an opposition to a trade mark registration (Article 48(1), Trademark Act) include the following, in addition to those mentioned in 4.10 Refusal of Registration:

• 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), Trademark Act);
• 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 among the public, or is likely to dilute the distinctiveness or reputation of the well-known trade mark or mark (Article 30(1)(11));
• 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));
• the mark contains another person’s portrait or well-known name, stage name, pseudonym or alternative name (Article 30(1)(13));
• 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)); and
• the mark is an infringement of another person’s copyright, patent right or any other right, where a final and binding judgment of the court has been rendered (Article 30(1)(15)).

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

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

• administrative litigation before the Intellectual Property Court within two months of receiving the decision of the Ministry of Economic Affairs, if dissatisfied with the appeal decision of the Ministry; 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 Intellectual Property Court.

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 a mistake among relevant consumers (Article 63(1)(1), 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 a mistake for the relevant consumers, while the owner knows, or should have known, the conduct of the licensee, but shows no objection thereto (Article 63(2), 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), 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 trade mark office and thus there is no likelihood of confusion or mistake (Article 63(1)(3), Trademark Act);
• the trade mark has become a generic mark, name or shape for the designated goods or services (Article 63(1)(4), 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), Trademark Act).

Any person may file an opposition to registration of a trade mark (Article 48(1), Trademark Act). Representation is not necessary for opponents or opposers that 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.

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

The opposition procedure typically consists of:

• filing of an opposition (by the opponent);
• procedural examination (by the trade mark 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.

Cancellation/revocation actions can be brought before the trade mark office (Article 63(1), Trademark Act). They cannot be brought before IP courts or civil courts.

Legal remedies against the decision of the trade mark office are, sequentially:

• an administrative appeal before the Ministry of Economic Affairs (within 30 days of the decision of the trade mark office) – the period of examination is theoretically three months, subject to a discretional extension of a further three months;
• an 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
• an 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.

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 trade mark has been registered (Article 38(1), Trademark Act). Therefore, amendments to the design or device of the trade mark are also not possible in cancellation proceedings.

For goods or services, no amendments shall be made to the designated goods or services after the trade mark has been registered, unless such amendment is a restriction of the designated goods or services (Article 38(1), 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), Trademark Act).

The owner of a registered trade mark may request the trade mark 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, Trademark Act). This shall be requested before a decision for the cancellation proceedings is rendered (Article 38(2), Trademark Act).

Trade mark cancellation/revocation actions and trade mark infringement actions are not heard together, with the former being heard by the trade mark office, and the latter by the court (the Intellectual Property 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 trade mark 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 trade mark office is also not binding on it (Article 16(1), Intellectual Property Case Adjudication Act).

The court may render a judgment in the infringement action before or after the trade mark office renders a decision in the cancellation action. It does not need to suspend the action and wait for the decision of the trade mark 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 for the trade mark office, while a decision on the cancellation action of the trade mark 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.

If a mark would make the public mistake or misbelieve the nature, quality or place of origin of goods or services, the public may file an opposition against the trade mark registration based on fraudulent filing (Articles 30(1)(8) and 48(1), Trademark Act).

If a mark would make the public mistake or misbelieve the nature, quality or place of origin of goods or services, the interested party may file for invalidation against the trade mark registration (Articles 30(1)(8) and 57(1), Trademark Act).

If a registered mark would make the public mistake or misbelieve the nature, quality or place of origin of goods or services when actually used, the public may file for cancellation against the trade mark registration (Articles 63(1)(5), Trademark Act).

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 are generally 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 trade mark office (Article 39(2), Trademark Act). 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 trade mark 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 (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 licenses 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.

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

• to demand the prevention of infringement (Article 69(1), Trademark Act);

• to demand the destruction of infringing articles and the materials or implements used in infringing the trade mark rights (Article 69(2), Trademark Act);
• to demand the payment of damages (Article 69(3), Trademark Act); and/or
• to request customs to seize articles that are suspected of infringing trade mark rights (Article 72(1), Trademark Act).

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, Fair Trade Act);
• the prevention of infringement (Article 29, Fair Trade Act);
• the payment of damages (Article 30, Fair Trade Act); and
• the payment of punitive damages, which may not exceed three times the amount of damages that are proven (Article 31, Fair Trade Act).

For a copyright holder, actions available to pursue infringement include:

• to demand a person who infringes copyright to stop such infringement (Article 84, Copyright Act);
• to demand the prevention of infringement (Article 84, Copyright Act);
• to demand the destruction of infringing articles and the materials or implements used in infringing the trade mark rights (Article 88-1, Copyright Act);
• to demand the payment of damages (Article 88, Copyright Act); and/or
• to request customs to seize articles that are suspected of infringing trade mark rights (Article 90-1, Copyright Act).

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.

The owner of an unregistered general trade mark has no trade mark rights under the Trademark Act or the Fair Trade Act, so no actions are available to pursue the use of its trade mark by another person.

The following cases constitute an infringement of copyright:

• to release a work publicly without the consent of the author (Article 15(1), Copyright Act);
• to indicate or not to indicate the name of the author of a work on an original or any copy thereof, or when the work is publicly released without consent of the author (Article 16(1), Copyright Act);
• to distort, split, tamper with or otherwise change the content, form or name of a work, thereby damaging the author’s reputation (Article 17, Copyright Act);
• to reproduce a work without consent or licence of the economic rights-holder (Article 22(1), Copyright Act);
• to recite publicly an oral and literary work without consent or licence of the economic rights-holder (Article 23, Copyright Act);
• to broadcast publicly a work without consent or licence of the economic rights-holder (Article 24(1), Copyright Act);
• to publicly present an audiovisual work without consent or licence of the economic rights-holder (Article 25, Copyright Act);
• to perform publicly an oral and literary, musical or dramatic/choreographic work without consent or licence of the economic rights-holder (Article 26(1), Copyright Act);
• to transmit publicly a work without consent or licence of the economic rights-holder (Article 26-1(1) of Copyright Act);
• to display publicly an original or any copy of unpublished fine art or photographic work without consent or licence of the economic rights-holder (Article 27, Copyright Act);
• to adapt a work into a derivative work or to compile works into a compilation work without consent or licence of the economic rights-holder (Article 28, Copyright Act);
• to distribute a work through transfer of ownership without consent or licence of the economic rights-holder (Article 28semel(1), Copyright Act); and
• to rent a work without consent or licence of the economic rights-holder (Article 29(1), Copyright Act).

It is stipulated that the following cases are deemed an infringement of copyright (Article 87(1), Copyright Act):

• to use a work by means of damaging the reputation of the author;
• to import any copy of a work reproduced without licence of the economic rights-holder;
• to import the original or any copy legally reproduced abroad of a work without licence of the economic rights-holder;
• to use a copy of a computer program that infringes on economic rights therein for business purposes;
• to distribute articles that are known to infringe on economic rights by any means other than transfer of ownership or rental, or publicly display or possess such articles with intent for distribution; and
• to provide with public computer programs or other technology that can be used to transmit or reproduce a work publicly, with intent to allow the public to infringe economic rights by means of public transmission or reproduction of the work through the internet, without consent or licence of the economic rights-holder, and to receive benefit thereby.

In addition, privacy is basically protected by civil law (Articles 184(1), 195(1), Civil Code). It may play a role in relation to copyright infringement because in some aspects privacy is similar to moral rights of a copyright. Specifically, the author enjoys the rights to disclose publicly their work under Article 15(1). Accordingly, if strict privacy policy is applied, a work could not be disclosed and infringement occurs otherwise. Likewise, it plays a role in the information society where, if civilisation is escalated by disclosure of a work, human progress may not evolve at the present pace if such a strict privacy policy is exercised.

There are no prerequisites to filing a trade mark or copyright lawsuit in Taiwan.

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), Code of Civil Procedure and Article 1, Intellectual Property Case Adjudication Act).

The complaint shall be plausible (Articles 249(3), 449bis and 502(2), 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, and may also order them to state or declare in detail the evidence used for a specific matter (Article 268, Code of Civil Procedure and Article 1, Intellectual Property Case Adjudication Act).

Civil Litigation

Proceedings are held as follows:

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

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

Taiwan does not provide an alternative avenue to resolve small trade mark or copyright claims.

Decisions of the trade mark office or copyright registration institution are not binding on the courts trying an infringement action (Article 16(1), Intellectual Property Case Adjudication Act). For example, when a plaintiff initiates a trade mark or copyright 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 or copyright, the decision of the trade mark office or copyright registration institution to revoke or invalidate the trade mark or copyright registration is not binding on the Intellectual Property Court.

The Intellectual Property Court may still find that the plaintiff’s trade mark or copyright registration shall not be revoked or invalidated.

There are no special procedures, remedies or statutes addressing counterfeiting and bootlegging.

Trade mark or copyright infringement is a criminal offence in Taiwan. A criminal procedure for a trade mark infringement offence typically includes:

• the trade mark owner or copyright holder 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.

The trade mark owner or copyright holder, however, may file a criminal complaint against the infringer. The process is as follows:

• prosecution – District Prosecutors Office;
• first instance – the District Court (Article 23, Intellectual Property Case Adjudication Act);
• second instance – the Intellectual Property Court (Article 25(1) and (2), 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, Intellectual Property Case Adjudication Act).

The special procedural provisions for trade mark and copyright proceedings are as follows:

• 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–34 of the Intellectual Property Case Adjudication Act provide for the venue and how to deal with new evidence on the same cancellation or revocation grounds.

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

The typical costs for bringing an infringement action to conclusion in the first instance include court fees for the first instance of civil litigation, which can be calculated by using a calculating programme.

There are no discovery proceedings, so attorney fees are relatively small compared to major industrial countries. For an average case, attorney fees can be kept under USD30,000. Since politicians keep the country moving in questionable directions, resulting in an over-saturated domestic legal market, quite a few cases (for each instance) are handled for under TWD80,000.

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

The defences against infringement can be generally categorised into the following two types:

• defences against infringement of moral rights – this normally applies to situations where the author does not own the copyright (eg, a public servant authors a work owned by the agency) (Article 15(1), Copyright Act). There are ownership transfers before a work is published (Article 15(2), (3), Copyright Act). For purposes or methods of using a work, the interests of an author are not damaged (Article 16, Copyright Act). There is a situation where it is presumed to be not in violation of the author’s will (Article 18, Copyright Act); and
• defences against infringement of economic rights – this relates mainly to the fair use of works (eg, Articles 22(2), 44–63, 65 and 87semel(1), Copyright Act).

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), Trademark Act).

A person having obtained ownership of an original or lawful copy of a work within the territory under ROC jurisdiction may distribute it by means of transfer of ownership (Article 59semel, Copyright Act). Owners of originals or lawful copies of works may rent such originals or copies; however, this shall not apply to sound recordings or computer programs (Article 60(1), Copyright Act).

Normally, importing an original or any copy of a work legally reproduced abroad without the authorisation of the economic rights-holder will be an infringement. This rule does not, however, apply if the original or a specified number of copies of a work are imported for private use of the importer, not for distribution, or if such an import occurs because the original or copies form part of the personal baggage of a person arriving from outside Taiwanese territory (Article 87semel, Copyright Act).

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), 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), 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), 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), 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), Code of Civil Procedure).

Taiwan permits monetary remedies.

The typical costs for bringing an infringement action to conclusion in the first instance include court fees for the first instance of civil litigation, which can be calculated by using a calculating programme.

There are no discovery proceedings, so attorney fees are relatively small compared to major industrial countries. For an average case, attorney fees can be kept under USD30,000. Since politicians keep the country moving in questionable directions, resulting in an over-saturated domestic legal market, quite a few cases (for each instance) are handled for under TWD80,000.

A trade mark owner or copyright holder cannot seek relief without notice to the defendant. The court will issue an official notice to the other party under all circumstances.

For trade marks, the legal system in Taiwan 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), Trademark Act). The customs seizure procedure for counterfeits typically includes the following:

• customs finds that the imported or exported articles are likely to be counterfeits (infringing articles);
• customs gives a notice to the trade mark 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.

For copyright, there are provisions for customs seizure of counterfeits and parallel imports. That is, the import or export of counterfeits and the parallel import are both illegal (Article 87(1)(III) and (IV), Copyright Act). A customs seizure procedure for counterfeits and parallel imports is typically as follows:

• customs finds that the imported or exported articles are obviously likely to be counterfeits or parallel import infringing articles;
• customs gives notice to the economic rights-holder or its representative or agent in Taiwan and requests its appearance before customs for identification, while giving notice to the importer or exporter at the same time and requesting its provision of relevant evidence of non-infringement;
• the economic rights-holder identifies the articles as counterfeits or parallel imports and provides relevant evidence of infringement;
• the importer or exporter provides relevant evidence of non-infringement;
• the economic rights-holder files an application for seizure of the articles with customs;
• customs seizes the articles; and
• the economic rights-holder brings a copyright infringement action before the Intellectual Property Court and gives notice to customs.

Trade mark or copyright infringement decisions may be appealed.

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

There is no applicable information in this jurisdiction.

There is no applicable information in this jurisdiction.