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Taiwan’s trademark system is based on the “first-to-file” principle, and is characterized by the fact that the Intellectual Property Office (TIPO) under the Ministry of Economic Affairs handles all administrative procedures—from examination and registration to opposition, invalidation, and cancellation—in a unified manner. This article provides a comprehensive overview of key practical points, ranging from trademark applications in Taiwan to post-registration management and responses to infringement.
Table of Contents
- Overview of the System (Competent Authority, Scope of Protection, Registration Requirements)
- Practical Understanding of the Non-Registration (Rejection) Framework
- Application, International Applications, and Examination Practices
- Priority and the Madrid System
- Fees (Official Fees) and Examination Flow
- Key Differences from Japan and China
- Appeals and Remedies
- Administrative Appeals and Administrative Litigation
- Post-Registration Management and Transactions
- Infringement Response and Enforcement
- Case Law, Significant Cases, and Recent Legal Amendments
- Primary Sources and Official Links
Overview of the System
The Taiwanese trademark system is characterized by the fact that TIPO conducts consistent examination and administrative disposition from “registration, opposition, invalidation, and cancellation (revocation),” and judicial remedies are sought through appeals followed by administrative litigation. Electronic filing (e-filing) is explicitly provided for in the Trademark Act, and electronic procedures, including electronic service, are incorporated into the system’s design (Trademark Act, Article 13).
The definition of a trademark is relatively broad; in addition to typical marks such as words and designs, non-traditional trademarks such as colors, three-dimensional shapes, motion, holograms, and sounds are explicitly included as protected subject matter (Trademark Act, Article 18, etc.).
| Key Points | Key Practical Points | Main Legal Basis |
|---|---|---|
| Competent Authority | TIPO is the authority responsible for examining and deciding on trademark registration, oppositions, invalidation (assessment), and cancellation (revocation). | Articles 14–16 of the Trademark Act |
| Applicable Laws | Trademark Act. Covers definitions, registration requirements, opposition, invalidation, cancellation, remedies for infringement, and criminal penalties | Trademark Act in General |
| Enforcement Regulations | Application Forms, Display Requirements for Non-Traditional Trademarks, Response Deadlines for Rejections, Requirements for Accelerated Examination Requests, etc. | Enforcement Regulations, Articles 12, 14–19, 34, etc. |
| Scope of Protection | In addition to words and designs, colors, three-dimensional shapes, motion, holograms, sounds, etc. (including combinations) | Article 18 of the Trademark Act; Articles 14–18 of the Enforcement Regulations |
| Requirements for Protection | “Distinctiveness” is central. It is also possible to claim that distinctiveness has been acquired through use | Trademark Act, Article 18; Article 29, Paragraph 2 |
Practical Understanding of Grounds for Refusal
Grounds for refusal are generally categorized into “absolute grounds (public interest, distinctiveness, etc.)” and “relative grounds (prior rights, likelihood of confusion, etc.).” In Taiwan, it is important to note that protection for well-known trademarks (covering not only confusion but also dilution) and the possibility of relief through consent are explicitly provided for in the statute.
| Categories | Typical Examples | Legal Basis |
|---|---|---|
| Absolute Grounds | Lack of distinctiveness (descriptive, generic terms, etc.), likelihood of causing confusion regarding quality, etc., public order and morals, etc. | Trademark Act, Article 29, Paragraphs 1 and 3, etc. |
| Relative Grounds | Identical or similar to prior registrations or applications, likelihood of confusion, well-known trademarks (confusion, dilution) | Article 30, Paragraph 1, Items of the Trademark Act |
| Basis for Proof | Confusion: Similarity of marks + similarity of goods/services + comprehensive assessment of consumer base, etc. Dilution: Risk of impact on distinctiveness, reputation, and credibility | Article 31 of the Enforcement Regulations |
Applications, International Applications, and Examination Practices
As a general rule, Taiwan applications must be "prepared in Traditional Chinese." The mandatory information to be included in the application documents (applicant information, trademark name, mark representation, designated goods/services, priority, translations, etc.) is listed in Article 12 of the Enforcement Rules.
| Practical Matters | Key Points | Legal Basis |
|---|---|---|
| Application Form (Basic) | Applicant/Agent, Trademark Name, Mark Representation, Designated Goods/Services and Classes, Priority Information, etc. | Article 12 of the Enforcement Regulations |
| Designated Goods/Services | Specify classes in the order of the Nice Classification (published by WIPO), and list the names of goods/services specifically | Article 19 of the Enforcement Regulations |
| Non-traditional trademarks | Colors: Color samples + description of use. 3D: Up to 6 views. Motion: Still images (up to 6) + description + electronic data. Sounds: Sheet music, etc. + electronic data | Rules 14–18 |
| Response to Notice of Reasons for Refusal | Domestic address, etc.: 1 month. Overseas: 2 months. Extension possible | Enforcement Regulations, Article 34 |
| Third-Party Information Submission | Third parties may submit comments prior to registration. TIPO has no obligation to notify the submitter of the status of the proceedings | Implementing Regulations Article 34-1 |
Priority and Madrid System
Taiwan has established a priority system in its Trademark Act and Enforcement Regulations based on its WTO membership and other factors. The priority period is six months.
⚠ Important: It is mandatory to file a priority claim at the time of application and submit proof of priority within three months of the filing date. Failure to submit proof will result in the claim being deemed “not asserted,” and it will be difficult to remedy this later.
✗ Madrid System: Taiwan is not a contracting party to the Madrid Protocol; therefore, it is not possible to designate Taiwan in an international registration or to file an international application with Taiwan as the Office of Origin. If a Taiwanese company wishes to use the Madrid System, it must do so through a place of business in a contracting party.
| Details | Deadlines and Requirements | Basis |
|---|---|---|
| Priority Claim (Standard) | File a Taiwan application within 6 months of the first filing date. Make a declaration at the time of filing. Proof must be submitted within 3 months of the filing date | Article 20 of the Enforcement Rules |
| Exhibition Priority | File the application within 6 months of the first exhibition date and submit a certificate from the organizer | Rules of Implementation, Articles 21–22 |
| Madrid System (designating Taiwan) | Taiwan cannot be designated as a country of international registration (Taiwan is not a contracting party) | TIPO Overseas Trademark Strategy Materials |
Fees (Official Fees) and Examination Process
The estimated major official fees based on the fee schedule published by TIPO are as follows. There are differences between online and paper applications.
| Procedure | Official Fees (NT$) | Practical Notes |
|---|---|---|
| Application (Paper) | 3,000 per class (up to 20 items) | An additional NT$200 per item for more than 20 items |
| Application (Online) | 2,400 per class (up to 20 items) | For more than 20 items, add 200 per item |
| Registration Fee (including publication fee) | 2,500 per class | It is important to manage payment deadlines after the registration decision |
| Request for accelerated examination | 6,000 per class | Effective May 2024 |
| Opposition | 4,000 per class | Within 3 months of publication of the registration |
| Invalidation (Review) | 7,000 per class | The 5-year limitation period is an issue for relative grounds |
| Cancellation (Revocation) | 7,000 per class | Non-use (3 years) and other categories |
| Renewal (Extension) | 4,000 per class | Double the fee for applications filed 6 months after the expiration date (8,000 per class) |
Examination Flow (Overview)
Application (Paper/Online)
↓
Formal Examination (Correction of Deficiencies)
↓
Substantive Examination (Distinctiveness, Prior Trademarks, Well-Known Status, etc.)
↓ No grounds for refusal ↓ Grounds for refusal
Notice of Intent to Register (Notice to Pay Registration Fee) Notice of Reasons for Rejection → Submission of Statement of Reasons and Amendments
↓
Payment of Registration Fee (Deadline Management)
↓
Publication of Registration / Issuance of Registration Certificate
↓
3 months after registration (opposition period) → Stabilization of rights
Registration fee payment deadline: Within two months from the day following the delivery of the registration decision. Remedial payment at double the amount is possible within six months after the deadline (Trademark Act, Article 32).
The estimated examination period, as published by TIPO, is 8 months for online "Trademark Registration Applications" (10 months for paper applications) (this is a statistical estimate and may be extended depending on the case details).
Key Differences from Japan and Mainland China
| Item | Taiwan | Japan | Mainland China |
|---|---|---|---|
| Madrid System | Non-signatory (Taiwan cannot be designated) | Available | Available |
| Timing of Opposition | 3 months after publication of the registration (post-grant) | 2 months from the date of publication of the registration gazette (post-grant) | 3 months after the preliminary examination notice (pre-grant type) |
| Language of Application | Traditional Chinese is the standard | Japanese | Chinese (Simplified) |
| Designated Goods/Services | Application of the Nice Classification and TIPO’s published classification tables | Nice Classification (Japanese Application) | Nice Classification (Subclass Application Noted) |
Trials and Remedies
In Taiwan, "trademark disputes" follow a structure in which TIPO adjudicates post-registration oppositions, invalidation (assessment), and revocation (cancellation), and appeals against these decisions are contested through administrative litigation.
| Procedures | Standing to File | Time Limits | Official Fees (NT$) |
|---|---|---|---|
| Opposition | Anyone may file | 3 months from the day following the publication of the registration | 4,000 per class |
| Invalidation (Assessment) | Generally focused on "interested parties" | Part of the grounds for opposition: 5 years (exceptions for bad faith, etc.) | 7,000 per class |
| Cancellation (Abolition) | "Any person" is often permitted | Non-use for three consecutive years, etc. | 7,000 per class |
Key points regarding cancellation for non-use: The requirement is “non-use for three or more years,” and if a request for cancellation is served, the rights holder is required to submit proof of use (Trademark Act, Article 63, Paragraph 1, Item 2; Article 65).
Administrative Appeals and Administrative Litigation
The standard procedure for seeking administrative relief against TIPO decisions (such as rejection notices, decisions on opposition, invalidation, or cancellation) is to first file an “appeal (administrative appeal)” and then proceed to administrative litigation.
| Stages | Statutory Time Limits | Practical Notes | Legal Basis |
|---|---|---|---|
| Administrative Appeal | 30 days from the day following service of the disposition | The deadline is determined based on the date of receipt | Article 14 of the Administrative Appeal Act |
| Filing of Administrative Litigation | Two months after service of the appeal decision | Lapse of the time limit poses a significant risk of illegality | Article 106 of the Administrative Litigation Act |
| Appeal | 20 days after service | Separate deadlines for supplementing grounds for appeal, etc. | Article 241 of the Administrative Litigation Act |
TIPO Decisions (Rejection/Objection/Invalidity/Revocation)
↓
Administrative Appeal (30 days)
↓ Dismissal, etc.
Administrative litigation (2 months) – First instance
↓
Appeal (20 days) · Final Instance
Post-Registration Management and Transactions
After registration, the main issues involve maintaining the right (renewal), transferring the right, licensing, security interests (pledges), and changes to registration information. In Taiwan, there are many matters where “failure to record the information renders it unenforceable against third parties,” so in trademark transaction practice, applications for recording are always filed in conjunction with the registration application.
Renewal, Proof of Use, Division/Limitation
The term of protection is 10 years, and the right may be maintained every 10 years through renewal. Renewal is possible starting 6 months before expiration, and a grace period of 6 months after expiration allows for renewal with a double fee (Trademark Act, Article 34).
| Administrative Procedures | Period and Requirements | Official Fees (NT$) | Legal Basis |
|---|---|---|---|
| Renewal (Extension) | Applications may be filed within 6 months prior to expiration. Double the fee applies for applications filed within 6 months after expiration | 4,000 per class (8,000 for late renewal) | Article 34 of the Trademark Act |
| Division (After Registration) | Procedure for division of registration available | 1,500 | Article 36 of the Enforcement Regulations |
| Reduction of Designated Goods/Services | In principle, no changes other than "reduction" are permitted after registration | 500 | Article 38 of the Trademark Act |
| Defense Against Cancellation for Non-Use | After service of a cancellation request, the rights holder must submit evidence of use | — | Trademark Act, Articles 63 and 65 |
Licensing, Assignment, and Security Interests (Pledges) and Registration Requirements
⚠ Important: In Taiwan, it is expressly stipulated that licenses, assignments, and pledges “cannot be enforced against third parties unless registered.” Contracts must be structured and closed with registration in mind.
| Transaction Types | Practical Effects | Requirement for Registration | Legal Basis |
|---|---|---|---|
| Exclusive and Non-Exclusive Licenses | As a general rule, the exclusive licensee may file an infringement lawsuit in their own name | Failure to register renders the right unenforceable against third parties | Article 39 of the Trademark Act |
| Sublicensing | As a general rule, the exclusive licensee may grant sublicenses (subject to contractual terms) | Registration is a requirement for asserting rights against third parties | Article 40 of the Trademark Act |
| Assignment (Transfer) | Enforceability against third parties | Registration is a requirement for third-party enforceability | Article 42 of the Trademark Act |
| Pledge (Security Interest) | Enforceability against third parties for creation, modification, and extinction; priority is determined by order of registration | Registration is a requirement for third-party enforceability | Article 44 of the Trademark Act |
Response to Infringement and Enforcement
In Taiwan, a "multi-layered enforcement" approach is possible, combining civil (injunctions, damages, etc.), administrative (customs enforcement), and criminal (counterfeit goods, etc.) measures.
Injunctions and Damages
| Remedies | Details | Requirements and Deadlines | Legal Basis |
|---|---|---|---|
| Injunctions and Preventive Measures | Request for Cease and Desist and Preventive Measures Against the Infringer | Proof of Infringement (Likelihood) | Trademark Act, Article 69, Paragraphs 1–2 |
| Disposal, etc. | Disposal of Infringing Goods and Tools | Court May Order Alternative Measures Based on the Principle of Proportionality | Article 69, Paragraph 2 of the Trademark Act |
| Damages | Requirements of Intent or Negligence | Two-year/Ten-year Exclusion Period | Article 69, Paragraphs 3–4 of the Trademark Act |
| Calculation of Damages | ① Civil Code Model ② Infringer’s Profits ③ Up to 1,500 Times ④ Equivalent to Royalties | Discretionary reduction possible if "significantly disproportionate" | Article 71 of the Trademark Act |
Customs (Border Control) and Criminal Proceedings
| Measures | Period and Requirements | Legal Basis |
|---|---|---|
| Customs Detention (Application) | Petition + Evidence of Infringement + Security | Article 72 of the Trademark Act |
| Deadline for Filing a Lawsuit | A notice to commence litigation must be filed within 12 days (extendable) after notification | Article 73 of the Trademark Act |
| Criminal Penalties (Typical Infringement) | Up to 3 years’ imprisonment and a fine of up to NT$200,000 | Article 95 of the Trademark Act |
| Criminal penalties (sale of infringing goods, etc.) | Up to 1 year in prison plus a fine of up to NT$50,000 | Article 97 of the Trademark Act |
Case Law, Significant Cases, and Recent Legislative Amendments
Major Precedents and Significant Cases
We present three cases addressing issues with significant practical implications (well-known trademarks, likelihood of confusion, and proof of use). In each case, the “evidence structure (what, in which market, and to what extent)” determined the outcome and is directly relevant to evidence planning in Taiwanese practice.
| Case | Issues (Summary) | Practical Implications |
|---|---|---|
| Supreme Administrative Court Case No. 1 of 2022 | The level of distinctiveness required for a “well-known trademark” in dilution cases. The Grand Bench unified the interpretation to indicate that “universal recognition among general consumers” is not required. | Even in dilution claims, establish a "market definition" early on and prove distinctiveness and dilution risk separately |
| Intellectual Property and Commercial Court, Case No. 19 of 2022 | Denied likelihood of confusion by comprehensively evaluating the degree of similarity between the marks, the nature of the goods and actual trade practices, and the existence of actual confusion | Gather evidence early on not only regarding “designated goods” but also “actual usage patterns and market conditions” |
| Intellectual Property and Commercial Court, Case No. 2 of 2022 (Administrative Commercial Appeal) | Proving “use in Taiwan” in cancellation proceedings for non-use. Use was denied based solely on an English-language website and pricing in U.S. dollars | Cross-border e-commerce and overseas services require objective evidence demonstrating “provision to Taiwan” |
Recent Amendments and Trends
| Topics | Content | Impact on Practice |
|---|---|---|
| Expedited Review | Application, Statement of Necessity, and Evidence are required. Requirements specified in the 2024 amendment to the Enforcement Regulations | For cases requiring early grant of rights, evidence planning can be incorporated into procedural strategies |
| Update to Guidelines on Protection of Well-Known Trademarks | Guidelines for the application of Article 30, Paragraph 1, Item 11 of the Trademark Act have been updated | Evaluation factors for distinctiveness and dilution can be prepared from the application stage |
| Renewal, Registration Fees, and Electronic Filing | Differences between online and paper filings, as well as double renewal fees, are clarified | Transparency in cost estimates. Customer management, including late payments for missed deadlines, is crucial |
| Comparison of Opposition Periods | Taiwan: 3 months for post-registration opposition. Japan: 2 months. China: 3 months after publication (pre-grant) | Global Monitoring The starting point for design registration varies by country |
Primary Sources & Official Links
A list of links to primary sources (official documents and original texts) frequently referenced in practice.
| Category | Document Name | Link |
|---|---|---|
| Laws (Taiwan) | Trademark Law (including English translation) | MOJ Legal Database |
| Laws (Taiwan) | Enforcement Rules of the Trademark Act | MOJ Laws and Regulations Database |
| Laws and Regulations (Taiwan) | Intellectual Property Case Trial Act | MOJ Laws & Regulations Database |
| Laws (Taiwan) | Appeals Act | MOJ Laws and Regulations Database |
| Laws (Taiwan) | Administrative Litigation Act | MOJ Laws and Regulations Database |
| Procedures (TIPO) | Trademark Fee Schedule | TIPO Official |
| Procedures (TIPO) | Processing Time (Estimated Examination Period) | TIPO Official |
| Guidelines (TIPO) | Examination Guidelines for the Protection of Well-Known Trademarks | TIPO Official |
| International (WIPO) | Madrid System Members | WIPO |
| Laws and Regulations (Japan) | Japanese Trademark Law (English Translation) | Database of English Translations of Japanese Laws |
| Laws (China) | Chinese Trademark Law | WIPO Lex |
Please consult us regarding trademark applications and registrations in Taiwan
Please feel free to consult us regarding Taiwan trademark application strategies, the use of priority rights, post-registration management, and more.
