1. How long does it take for a Taiwan trademark application from filing to registration?

In practice, it takes about 1 (one) year from filing a trademark application to receiving a trademark certificate. First, it takes about 6-8 months for the Intellectual Property Office (TIPO) of the Ministry of Economic Affairs (MOEA) to examine a trademark application. That is to say, applicants receive the first official notice from TIPO in about 6-8 months after the filing date of the trademark application. Then, if TIPO determines that no amendment from the applicant is required or no similar prior trademarks exists, it will directly issue the “Decision to Grant a Trademark” to the applicant. Lastly, after the applicant pays the registration fee, TIPO will arrange the date of publication for registration and issue the trademark certificate. In general, applicants receive the trademark certificate in about two months after paying the registration fee.

If any amendment is required or a similar prior trademark exists, the examination will take longer than a year, depending on the time applicants take to make amendments and responses, and the examination and processing time of TIPO, the Petitions and Appeals Committee of MOEA, and a court of law.

Please visit the following link for trademark application procedure: https://www.tipo.gov.tw/ct.asp?xItem=155756&ctNode=7565&mp=1

© Claire W.J. Hsu.

2. How long does it take for TIPO to process various trademark cases?

Please refer to the following table, which is based on the publications by TIPO:

3.  May I use my trademark before a trademark registration is accepted?

Yes, you may use your trademark regardless of whether the trademark is registered, as trademark use is irrelevant to trademark registration. However, when using a trademark in business activities before its trademark registration is accepted or even before filing a trademark application, there is a risk that a party might plagiarize (take and pass it off as its own) your trademark and apply for registration to TIPO under his/her name. What could be really worse is, the party might accuse you of trademark infringement and claim damages from you due to your use of your own trademark. Therefore, we advise you to complete or at least apply for trademark registration before using your trademark, so as to protect your rights and interests.

In addition, if trademark registration is already accepted when you start to use your trademark in trade, you should mark the trademark with “®” symbol to make a clear expression to the general public that the trademark is registered and protected under the Trademark Act. If your trademark registration is not accepted while using the trademark (trademark application pending), you should mark with TM symbol to remind the public that you claim it as a trademark in use to avoid others’ misuse.

4. What is the difference between the “TM” and “®” symbols?

In general, marking a trademark with the TM symbol is to indicate that the word/device is used as a trademark (regardless of whether its application for trademark registration is pending or accepted), whereas marking with the ® symbol is to indicate that the trademark is already registered.

However, the enforcement of the trademark right for a registered trademark will remain unaffected even if the trademark is not marked with the ® symbol. By marking a trademark with the ® symbol, it is easier to give notice to the general public that the trademark is a registered trademark.

5.  Can I change the reproduction of a trademark after filing an application for registration?

In principle, you cannot change the reproduction of a trademark after filing an application for registration. Article 23 of the Trademark Act provides: No amendments shall be made to the reproduction of a trademark and the designated goods or services thereof after an application for trademark registration has been filed, unless such amendment is a restriction of designated goods or services or an amendment to the reproduction of a trademark which does not substantially change such trademark.

The reproduction (whether a word or device) and the designated goods or services of a trademark must not be changed after filing an application for trademark registration. Only those involved with non-substantial changes in the trademark reproduction, such as ® or ㊣, may be deleted.

If a substantial change of a trademark reproduction is desired after filing an application for trademark registration, you will need to file a new application for trademark registration.

6.  What does it mean by claiming a priority right of a trademark?

An applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with Taiwan (the ROC), or filed such application with a member of the World Trade Organization (WTO), may claim a right of priority, for the purposes of registering the same trademark with the same reproduction in Taiwan for some or all the same goods or services, within six months from the day following the date of filing of the first such application. The date of priority, namely the date of filing of the first such application, shall count as the date of filing of the corresponding trademark application in Taiwan.

In practice, the applicant should, in the application for trademark registration in Taiwan, claim the right of priority, and specify the date of filing the foreign application, the name of the foreign country, and the application number. The applicant must also submit the application documents (the priority document) admitted by the Registrar of the foreign country. If the priority document cannot be submitted while filing the application in Taiwan, the applicant may submit it within three months following the date of filing to avoid the priority claim being inadmissible.

7.  How long is a registered trademark valid for?

The proprietor of a registered trademark shall have the exclusive right of the trademark for a period of ten years from the date of publication for registration. Within six months before the expiry of the period of the trademark right, the applicant should apply for renewal of the trademark right and pay the renewal fee to the Registrar. After the date of expiry, the applicant may still renew the trademark right by paying in double within six months from the day following the date of expiry of the period of the trademark right. The duration of each renewal period for a registered trademark shall be ten years, without limitation to the times of renewals.