Trademark Refusal in Taiwan? How to Respond Under Article 30

Many entrepreneurs panic when they receive an advance notice of reasons for disapproving their trademark application from the Taiwan Intellectual Property Office (TIPO).

“Does this mean my trademark has no chance of being registered?”

“Do I have to choose a new brand name?”

In practice, however, it may be too early to reach that conclusion.

Trademark examination inevitably involves case-by-case judgment. More importantly, an advance notice of reasons for disapproval is not necessarily the final disposition of refusal. Rather, it gives the applicant an opportunity to understand the examiner’s legal concerns and submit arguments, explanations, or supporting evidence before a final decision is made.

From Goldkeen perspective, such a notice is better viewed as a legal question that needs to be answered strategically. The key is not simply whether an objection has been raised, but how the applicant responds to it.
 

Why Is a Trademark Application Refused? Understanding Article 30 of the Taiwan Trademark Act

Trademark objections in Taiwan frequently involve Article 29 of the Trademark Act, which concerns distinctiveness, or Article 30, which sets out circumstances under which a trademark may not be registered.

One of the most common issues in practice is similarity between trademarks and the resulting likelihood of confusion.

Under Article 30, Paragraph 1, Subparagraph 10 of the Taiwan Trademark Act, a trademark may not be registered if it is identical with or similar to another person’s registered trademark or earlier-filed trademark, is designated for identical or similar goods or services, and consequently creates a likelihood of confusion among relevant consumers.

However, one point is often overlooked: likelihood of confusion is determined on a case-by-case basis.

A certain degree of similarity between two trademarks does not automatically mean that registration is impossible. The examiner must assess the overall circumstances, including the degree of similarity between the marks, the relationship between the designated goods or services, the distinctiveness of the marks, and other relevant factors affecting consumer perception.

The outcome therefore depends not merely on whether two marks look or sound similar, but on the overall circumstances surrounding the potential for consumer confusion.
 

The Key to Responding: Show Why Consumers Are Unlikely to Be Confused

When applicants receive an objection, they often respond instinctively:

“Our names are different.”

“Our brands have completely different positioning.”

“Our prices are very different.”

These arguments may make sense from a business perspective, but they do not necessarily address the central legal question.

The key issue in trademark examination is whether relevant consumers are likely to mistake the source of the goods or services or believe that the two businesses are economically or commercially related.

An effective response therefore requires more than subjective assertions. The applicant should translate its commercial position into objective facts, legal arguments, and, where relevant, verifiable market evidence.
 

Structuring Evidence to Challenge a Finding of Trademark Similarity

When Goldkeen handles a trademark response, we do not begin by simply “arguing” with the examiner. We first examine the evidence and identify which factors are legally relevant to the objection.

Depending on the circumstances of the case, relevant materials may include long-term advertising and marketing records, social media performance data from platforms such as Facebook and Instagram, sales records and invoices from physical or e-commerce channels, media coverage, brand exposure, and other evidence demonstrating how consumers actually encounter and recognize the mark in the marketplace.

Strong sales figures, substantial advertising expenditure, and extensive market recognition may help establish the commercial recognition of a mark and provide context for assessing consumer perception.

Where the objection concerns lack of inherent distinctiveness under Article 29, evidence of extensive and continuous use may also be relevant to establishing “acquired distinctiveness,” the official term used by TIPO for distinctiveness obtained through use.

The objective is to build an evidence-based argument rather than relying solely on the applicant’s own interpretation of the brand.
 

Limiting the Designated Goods or Services May Reduce the Risk of Confusion

Another frequently overlooked issue is the scope of the designated goods or services.

Article 30, Paragraph 1, Subparagraph 10 is concerned not only with similarity between trademarks, but also with whether the marks are used or designated for identical or similar goods or services.

This means that, in some cases, narrowing the scope of designated goods or services may help reduce the degree of overlap.

For example, suppose an earlier trademark primarily covers clothing, while the applicant’s actual business focuses on handbags and leather goods. If the original application unnecessarily includes a broad range of clothing-related goods, the examiner may perceive a greater degree of market overlap.

In such circumstances, Goldkeen may evaluate whether limiting certain designated goods could more accurately reflect the applicant’s actual business and reduce the potential for confusion.

At first glance, narrowing an application may appear to be a concession. Strategically, however, a more precise scope of protection can sometimes be more valuable than pursuing an unnecessarily broad application that faces substantial registration obstacles.
 

Consent and Coexistence: A Commercial Solution Beyond Legal Arguments

When legal arguments and adjustments to the designated goods or services are not sufficient to resolve the examiner’s concerns, another possible strategy is obtaining consent from the owner of the earlier trademark.

Under Article 30, Paragraph 1, Subparagraph 10 of the Taiwan Trademark Act, registration may still be possible where the proprietor of the earlier registered or earlier-filed trademark has consented to the application, provided that such consent is not obviously improper.

This creates room for commercial negotiation.

In practice, two businesses may be able to establish clear boundaries regarding their respective markets, goods, services, or methods of use. Through appropriate negotiation and legal arrangements, a potential trademark conflict may sometimes be transformed into a manageable coexistence relationship.

Whether this approach is appropriate, however, must be evaluated on the facts of each individual case.
 

Conclusion: A Trademark Objection Is Not Necessarily the End

A trademark application is not always decided in a single step.

An advance notice of reasons for disapproval gives the applicant an opportunity to reassess the trademark, the designated goods or services, available evidence, and the legal arguments supporting registration.

At Goldkeen, we approach trademark responses as a strategic reassessment rather than a routine filing exercise. From evidence and legal analysis to the scope of protection and broader market strategy, each element should work together to strengthen the foundation of the trademark application.

A trademark is more than a name. It represents the identity, reputation, and trust that a brand builds in the marketplace.

When challenges arise, the strategy used to address them may determine how far that brand can go.

Goldkeen International Property Office combines professional knowledge with practical experience to help businesses protect their brands in Taiwan and expand into markets worldwide.

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