Trademark

Summary
  1. Legislation
    Trademark protection is governed under the Trademark Act 2011
  2. Definition
    A trademark is a mark used by a person in the course of business or trade to identify and distinguish the source of goods or services of one undertaking from those of another
  3. Criteria
    A trademark can be generally a::

      1. Word
      2. Phrase
      3. Symbol
      4. Device
      5. Color
      6. Shape
      7. Packaging of goods
      8. Motion
      9. Hologram
      10. Sound

    A mark has to be distinctive and have to be determined in the four criteria which are

      1. Arbitrary
        A mark that bears no relationship to the product in which it produces. It comprises of a common word or term which does not relate to the product promoted. These marks are held to be inherently distinctive and are usually given a high degree of protection.
        Ie: Apple – Phone and Computers, Ivory – Soap
      2. Suggestive
        A mark which indicates or suggest the characteristic of a particular good. It does not specifically describe the good. Unlike arbitrary or fanciful, the word or phrase used is not completely unrelated to its product. It appeals to the imagination of the consumer to identify its characteristics
        Ie: Blu-ray – high definition, high capacity data storage, Copperstone – suntan lotion
      3. Descriptive
        A mark which clearly describes a part or the product instead of describing the characteristic or quality of the product. These marks are not held to be distinctive and would not be protected unless it can be justified that the mark refers to a particular producer and not its product
        Ie: Holiday Inn – hotel and service
      4. Generic
        A mark which describes the general category in which the product. A generic term is not protected under trademark law as they are too simple and does not allow for distinguishing of goods or services from one party to another. Therefore it is not protected under the trademark law.

    However, the following marks are not registrable

      1. Marks contrary to public policy or accepted principles of morality
      2. Misleading marks
      3. Trademarks that are likely to cause confusion
      4. Squatting trademarks
  4. Membership
    X Paris Convention for the Protection of Industrial Property
    X Madrid Protocol
    Taiwan is not party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. As such this is not applicable in Taiwan
    Taiwan is also not a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization.
  5. Rule of Priority
    Taiwan practices a ‘First-to-file’ system, which recognizes the first person to file the invention which is not necessarily the first inventor.
  6. Duration and Renewal
    A trademark once granted is valid for 10 years and can be renewed at the end of every term.
Procedure/Timeline
TaiwanProcedure

  1. Application
    An application can be with the relevant information and documents to the Taiwan Trade Mark Office
  2. Preliminary Examination
    An examination will be done once a complete explanation has been submitted. This will consider if the application fulfills the relevant provisions of the Law.
    Should any issue arise, the applicant will be informed and be required to make the necessary amendments
  3. Publication
    Once the application has been preliminary approved, the application will be published in the Gazette.
    Within 3 months from the date of publication, any individual can file an opposition against the trademark. Should there be no opposition filed within the time period, the application will be granted.
  4. Opposition
    Should an opposition be filed against the trademark, the Office shall hear both the opponent and the supplicant state facts and grounds on the opposition. The Office will then look make the necessary investigation and verification and make a decision as the validity of the mark
  5. Grant
    Once the application has passed its publication period with no opposition, the application will be granted with a certificate of trademark registration and the mark will be published.
Requirements/ Documents
The following information/ documents are required for a trademark application in Taiwan:

  1. Name and Address of Applicant(s)
  2. Name and Address of Designer(s)
  3. Drawings
  4. Claims
  5. Detailed list of products or services to be covered in the application
  6. A copy of the Certificate of Incorporation or Buisness Registration Certificate or anything similar in nature
  7. Priority document(s)
  8. Power of Attorney (if applicable)
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    Patent protection in Taiwan Is governed under the Patent Act 2014
  2. Definition
    A patent is issued for any creation of technical concepts by utilizing the rules of nature, such as materials, compositions, machines, objects, process, software processes and microorganisms
  3. Criteria
    For an invention to be patentable in Taiwan, the invention must be

      1. Novel
      2. Utility
      3. has an Inventive Step

    However, the following invention are not to be patented

      1. Animals, plants and essential biological processes for the production of animals or plants, except for processes for producing microorganisms
      2. Diagnostic, therapeutic or surgical methods for the treatment of humans or animals
      3. Inventions contrary to public order or morality
  4. Membership
    X Paris Convention for the Protection of Industrial Property
    X Patent Cooperation Treaty (PCT)
    Taiwan is not party to the Paris Convention for the Protection of Industrial Property. This does not provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Therefore, Taiwan is not able to apply this principle.
    Furthermore, Taiwan is not a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization.
  5. Rule of Priority
    Taiwan practices a ‘First-to-file’ system, which recognizes the first person to file the invention which is not necessarily the first inventor
  6. Duration and Renewal
    A patent once granted is valid for 20 years from the filing date. An annuity is required to be paid after the patent is issued
Procedure/Timeline

TaiwanPTProcedural

  1. Application
    An application for a patent can be made to the State Intellectual Property Office P.R.C. The application must be in written form or electronic
  2. Formal Examination
    A preliminary examination examines the application to determine if the meets the requirements of the Law, in respect to the documents and information.
    The application will be published within 18 months from the date of application.
  3. Substantive Examination
    A substantive examination is to be requested, the applicant then has to submit the reference material. Failure to request for a substantive examination will deem the the application withdrawn.
    During the examination, should there have been any issues with the application which do not conform to the legislation, the applicant will be informed and require the applicant to submit certain documents or information. Failure to respond to the necessary requirements, the application will be deemed withdrawn
    After the applicant has responded to the issues either by stating his opinions or making amendments, should the application still be deemed to not comply with the provisions of the legislation, the application will be rejected completely.
  4. Publication
    The application shall be published within 18 months from the date of application.
  5. Grant
    If the application has no reason for rejection, the patent office will make a decision to grant the patent. The office will also issue a patent certificate and the date of receipt
Requirements/ Documents
The following information/ documents are required to submit a Patent Application in Taiwan

  1. Name and Address of Applicant(s)
  2. Name and Address of Inventor(s)
  3. Specification
  4. Drawing
  5. Original oath executed by the inventor
  6. Original Assignment executed by the inventor(s)
  7. Original executed power of attorney
  8. Certified copy of the corresponding patent application
  9. Priority Documents
Documents
Downloadable Forms
Agents
Fee

Utility Model

Summary
  1. Legislation
    Utility Model in Taiwan is governed under the Patents Act 2014
  2. Definition
    A Utility Model refers to the creation of a technical idea relating to the shape or structure of an article which occupies certain space, utilizing the laws of nature
  3. Criteria
    To submit an application for Utility Model , it must be

      1. Have a physical/tangible patents
      2. Involve shape, structure, as well as standard requirements
      3. No methods or substances
  4. Membership
    X Paris Convention for the Protection of Industrial Property
    X Patent Cooperation Treaty (PCT)
    Taiwan is not party to the Paris Convention for the Protection of Industrial Property. This does not provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Therefore, Taiwan is not able to apply this principle.
    Furthermore, Taiwan is not a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization.
  5. Rule of Priority
    Taiwan practices a ‘First-to-file’ system, which recognizes the first person to file the invention which is not necessarily the first inventor
  6. Duration and Renewal
    A utility model once granted is valid for 10 years from the filing date
Procedure/Timeline

TaiwanPT2Procedure

  1. Application
    An application for a patent can be made to the State Intellectual Property Office P.R.C. The application must be in written form or electronic
  2. Formality Examination
    The application will be automatically examined only for formality check. There is no requirement for a substantive examination like patent application.
  3. Registration
    Once the application has pass the formality examination, the applicant will then be issued a Notice of Allowance. The applicant then has to pay the required fee for registration.
    The applicant once the necessary fee has been paid will be issued Registration Certificate by the Taiwan Intellectual Property Office.
Requirements/ Documents
The following information/documents are required to file a Utility Model Application

  1. Name and Address of Applicant(s)
  2. Name and Address of Inventor(s)
  3. Specification
  4. Drawing
  5. Original oath executed by the inventor
  6. Original Assignment executed by the inventor(s)
  7. Original executed power of attorney

Industrial Design

Summary
  1. Legislation
    Design patents in Taiwan is governed by Patent Act 2014
  2. Definition
    A design refers to the creation made in respect of the shape, patter, color or any combination of an article as a whole or in part.
  3. Criteria
    The design must be

      1. Novel
      2. Industrial Applicable

    However, the following shall not be granted a design patent

      1. Shape of an article solely dictated by its function
      2. Fine arts
      3. The layout of integrated circuits and electronic circuits
      4. And article contrary to public order or morality
  4. Membership
    X Paris Convention for the Protection of Industrial Property
    Taiwan is not party to the Paris Convention for the Protection of Industrial Property. This does not provide that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State.
  5. Rule of Priority
    Taiwan practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor
  6. Duration and Renewal
    A design patent is Taiwan is valid for 12 years from the date of filing
Procedure/Timeline

TaiwanIDProcedure

  1. Application
    An application can be made to the Taiwan Intellectual Property Office. A complete application has to be made together with the required fee before any progress can be made on the application
  2. Examination
    A formality examination will be conducted to determine if the application is valid in terms of its documents submitted.
    A substantive examination will also be conducted automatically once the application has been approved. The substantive examination determines whether the design fulfills the requirements as listed down in the legislation
    Should there be any objection raised, the applicant can request for a substantive reexamination. Should the examiner still deem the application unsatisfactory a final rejection will be issued. Should the applicant still want to pursue the design, he can appeal to Intellectual Property Court or further to the Supreme Administrative Court
  3. Registration
    Should the examiner find no grounds of objection or where the objection raised has been dealt with, a notice of allowance will be issued to the applicant.
    Once the applicant has paid the required fee, a registration certificate will be issued to officially register the design. The application will also be published.
Requirements/ Documents
The following information/documents are required for an application in design patent

  1. Name and Address of Applicant
  2. Name and Address of Inventor
  3. Original executed Oath by inventors
  4. Original assignment executed by inventors
  5. Power of Attorney
  6. Specifications
  7. Drawings
  8. Certified copy of the corresponding patent application (if applicable)
Documents
Downloadable Forms
Agents
Fee