2022/05/12 copyright©️ GOLD KEEN INTELLECTUAL PROPERTY OFFICE

 

With the continuous development of cross-strait economic and trade exchanges, commercial trade disputes have also increased day by day, especially in trademark disputes. In recent years, Taiwanese businesses have sought various ways to protect their own trademark rights. At the same time, mainland Chinese enterprises have also accused their trademarks of being hijacked in Taiwan. The author summarizes four remedial measures for encountering trademark hijacking in Taiwan based on the local trademark system for reference.

 
Opposition
 

Anyone who believes that a trademark published for registration is in violation of the provisions of the Trademark Act may file an opposition within 3 months after the publication of the registration. The opponent is not required to demonstrate the existence of their trademark rights, and there is no limitation on their status as an interested party.

 

Opposition Procedure:
 

  • The opponent submits an opposition application with facts and reasons as well as copies of relevant evidence within 3 months after the trademark registration publication.
  • The examiner reviews the opponent's opposition documents and evidence. If the relevant facts and reasons are clear and complete, the official will notify the opposed party to respond within a specified period; otherwise, the opponent will be given a deadline to make corrections. If they fail to do so, the opposition will not be accepted.
  • The opposed party submits their response. (They can also choose not to respond, in which case the procedure proceeds to step 5.)
  • The parties engage in cross-examination of each other's arguments, with no limit on the number of times, until one party gives up.
  • After reviewing the materials from both sides, the official issues an opposition decision.
  • If one party is dissatisfied, they may prepare a complaint, evidence, and power of attorney within 30 days from the day after receiving the opposition decision and file a lawsuit with the Ministry of Economic Affairs.
  • Time: 6-12 months (Step 4 is not included in the time estimate, as it cannot be predicted. The official review process begins in Step 5 and takes about 5 months.)
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Required Materials:

 

  • Statement of Opposition (including facts and reasons):
  • The applicant must provide evidence of use of the trademark prior to the application date of the challenged trademark, such as sales invoices, distribution agreements, advertising materials, product orders, internet search results, etc.
  • Relevant materials proving the well-known status of the challenged trademark in both Mainland China and Taiwan, such as local media coverage, certificates of well-known trademarks, etc.;
  • Or evidence showing that the applicant used the trademark prior to the applicant of the challenged trademark and the challenger was intentionally imitated;
  • The earliest time when the challenger used the trademark in Mainland China;
  • Certificates or application receipts of the challenged trademark in other countries/regions;
  • Any other evidence that is favorable to prove the imitation registration of the challenged trademark.
 

Power of Attorney

 

Other grounds for opposition of trademarks in Taiwan include:Lack of distinctiveness of the trademark;


Situations where a third party has registered a trademark with the following conditions:
 

  • The registrant knew that another party had already been using the trademark and intentionally registered it;
  • The trademark may cause confusion or mistake with a previously registered trademark;
  •  The registrant applied for registration of a trademark that is identical or similar to a well-known trademark of another party;


If a registered trademark has been invalidated due to confusion or mistake with another party's registered trademark, and the registrant re-applies for registration of the same or a similar trademark within 3 years from the date of invalidation, any party may file an opposition.

 

Cancellation
 

If a trademark in Taiwan has not been used continuously for three years, anyone can file a cancellation request for all or part of the goods/services covered by the trademark. The three-year period is calculated from the date of registration announcement. Cancellation in Taiwan is equivalent to the three-year non-use cancellation system in mainland China.


Cancellation procedure:
 

  • The applicant for cancellation should submit a cancellation application stating the facts and reasons, and attach evidence of the trademark owner's non-use for three years.
  • An examiner will review the applicant's materials. If the relevant facts and reasons are clear and complete, the authority will notify the cancelled party to respond within a specified period; otherwise, the cancellation applicant will be notified to make corrections within a specified period. If no correction is made by the deadline, the application will not be accepted.
  • The party being cancelled must provide a reply and actively present evidence to prove the fact of using the trademark.
  • After reviewing the materials from both sides, the authority issues a cancellation decision.
  • The party who is not satisfied with the decision can prepare an appeal letter, evidence materials, and a power of attorney within 30 days from the day after receiving the cancellation decision, and submit the original documents to the Ministry of Economic Affairs for appeal.
  • Time: about 6-8 months (official review starts from stage 4, which takes 6 months).
  • Required materials:
  1. Cancellation application (including facts and reasons): prove that the trademark owner (the party that snatched the trademark) has not used the trademark. Usually, evidence is collected from internet searches, telephone interviews, on-site visits, and market surveys.
  2. Power of attorney


Note: Non-use of a trademark is a passive fact, and the trademark owner (the snatching party) should actively present evidence to prove the fact of using the trademark. The applicant for cancellation (the snatched party) only needs to provide sufficient evidence to explain that their claim is true.


Grounds for trademark invalidation in Taiwan include:
 

  • The trademark has caused confusion or misunderstanding due to a change in use or addition of annotations.
  • The trademark has not added appropriate distinctive marks as required.
  • The trademark has lost its distinctiveness and become a common symbol, name, or shape.
  • The nature, quality, or origin of the goods or services associated with the trademark are misrepresented or misunderstood.


Evaluation


Within five years after the registration of a trademark in Taiwan, if an interested party believes that the registration of the trademark has affected its interests and violates the provisions of the Trademark Law that prohibit registration, they may file an evaluation application to revoke the registration of the trademark.

 

Evaluation process:

 

  • The applicant files an evaluation application;
  • Procedural examination: The examination checks whether the applicant's factual reasons and evidence are complete. If the submitted materials are incomplete, the applicant must make up for the deficiencies within one month. If not, the evaluation will not be accepted;
  • Notice of defense: The trademark owner can defend within one month.
  • Substantive examination: If the trademark owner answers or fails to answer within the time limit, a substantive examination will be conducted. If the factual evidence is clear, a decision will be made. If it is not clear enough, the examiner will notify the trademark owner to supplement the defense within one month. If the trademark owner does not respond, it will enter the decision stage. The applicant will be notified to submit a statement of opinion within one month. If the applicant does not submit a statement, it will also enter the decision stage;
  • Decision (official ruling): The examiner will make a ruling based on the evidence submitted by both parties within three months.
  • The party that disagrees may appeal.

 

Timeframe: Around 6 months.
(Time for supplemental defense/statement of opinion is not counted)

 

Required materials:
 

  • Evaluation report (stating the facts and reasons)
  • The applicant needs to provide evidence of use earlier than the application date of the registered trademark and evidence of continuous use of the trademark, including sales invoices, distribution agreements, advertising materials, product orders, online search data, etc.
  • Relevant materials proving the notoriety of the registered trademark in Mainland China and Taiwan, such as local media reports and publicity, documents certifying the well-known trademark, etc.;
  • Or proof that the registrant of the trademark knew about the prior use of the trademark by the applicant and intended to copy it;
  • The earliest time the applicant used the trademark in China;
  • Certificates or application receipts for the trademark registered in other countries/regions;
  • Any other evidence that is beneficial to prove that the registered trademark was copied for registration.

 

Power of Attorney Other reasons for trademark evaluation in Taiwan:

 

  • The trademark lacks distinctiveness.
  • The trademark falls under a prohibited registration circumstance. For example, if a party's trademark registration has any of the following situations:
  1. knowingly registers a trademark after being aware of another party's prior use, with the intent to imitate or copy.
  2. has the potential to cause confusion or misunderstanding with a previously registered trademark.applies for registration of a trademark that is identical or similar to another party's well-known trademark.
  • If a registered trademark is invalidated due to causing confusion or misunderstanding with another party's registered trademark, and within 3 years after the invalidation date, the same or similar trademark is re-registered, the authorities may initiate an evaluation process.

 

Letter of Complaint (Third Party Opinion)

 

Anyone who believes that a Taiwan trademark application has circumstances that are not registrable under the Trademark Act may submit a letter of complaint to the authorities before the trademark is finally registered.

 

Required materials:
 

  • Letter of complaint (there is no specific format for the letter, but it should include the trademark application number and state the claimed facts and reasons):
  1.  The applicant shall provide evidence of use earlier than the filing date of the trademark application and continuous use of the trademark, which may include sales invoices, distribution agreements, advertising materials, product orders, network search data, etc.
  2. Relevant materials proving the well-known status of the trademark in mainland China and Taiwan, such as local network media reports and famous trademark certificates;
  3.  Or evidence that the trademark applicant was aware of the prior use by the opposing party and intended to imitate it;
  4. The earliest time the opposing party used this trademark in China;
  5.  Certificates or application receipts of the opposing party's trademark in other countries/regions;
  6.  Any other evidence that may prove trademark imitation and registration.

 

Process:
 

  • The applicant submits a letter of complaint (stating the facts and reasons).
  • The examiner reviews the trademark application with reference to the letter.
  • The examiner issues a rejection opinion on the opposing trademark or does not approve the content of the letter of complaint. The opposing trademark will be registered smoothly.
  • This procedure is an informal channel for relief, commonly known as "tattling". If the examiner does not approve, the applicant can also seek relief through the opposition procedure.

 

Overall recommendation: Depending on the circumstances, after submitting a letter of complaint/opposition/evaluation/invalidation against the opposing trademark, we usually recommend that the actual trademark owner also submit a new application to prevent the trademark from being grabbed by others or to avoid registration of other similar trademarks during the case review process.

 

 

 

Summary
 

The trademark registration process in Taiwan involves application submission, formal examination, substantive examination, trademark registration, and publication. If everything goes smoothly, it takes around 4-6 months from application to registration. In Taiwan, trademarks are registered before they are published, with a publication period of three months. The victim of a trademark squatting incident can choose the appropriate procedure to protect their trademark rights based on the stage of the squatting trademark. It's worth noting that the Taiwan Intellectual Property Office supports third-party submission of opposition opinions (third-party opposition opinions) for examiners' reference. Compared to the objection, cancellation, and evaluation procedures that are taken after trademark registration, this system is simpler in terms of procedures and has lower time and cost, making it a good remedy, but it's important to pay attention to the progress of the examination of the squatted trademark. Similar third-party opposition measures also exist in South Korea and Japan. For specific procedures and information, feel free to contact us.

 

 

This article is authorized to be reprinted from the WeChat public account IPRINTL.

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