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| Q1: What must a foreign trademark holder do to have trademark protection in Taiwan? |
| Trademark applications must be filed through the Taiwan Intellectual Property Office to gain protections, because Taiwan has a "first to file" system instead of a "first to use" system. Although Taiwan protects famous marks, we still suggest that you file such famous marks in Taiwan. |
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| Q2: Can a foreign company file a TW patent by itself? |
| No. If an applicant does not reside in or have a business office in Taiwan, a licensed patent attorney must file the application on his or her behalf. Also, under Article 28, if claiming priority based on a trademark application in a foreign country (within 6 months of the foreign filing date), the applicant must submit a certified document issued by the government of that country for the priority claim. |
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| Q3: Is it possible to stop Customs from allowing the export or import of counterfeit goods? |
| Yes. Trademark rights holders who suspect infringement may apply for suspension of release of imported or exported goods through the Directorate General of Customs or the Customs Authorities at the relevant port. |
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| Q4: What if the goods bear the registered TW trademark, but they are for exportation only and are not available on the domestic market? |
| The use of a trademark includes the use of a trademark for importation or exportation use, and is not confined to the marketing of the trademark in the domestic market. For goods bearing a registered trademark in Taiwan for exportation use, even if these goods are not marketed domestically, as the trademark aims to identify these goods as coming from a manufacturer that is entitled to protection under the Trademark Act of this country, although these goods are to be exported from the territory of Taiwan, it shall still be deemed a use of the registered trademark. |
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| Q5: Can a certification mark right, a collective membership mark right, or a collective trademark right be assigned or licensed to another party or be created as a pledge? |
| No. |
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| Q6: What constitutes trademark infringement? |
According to Articles 29 and 81 of the Trademark Act, the following actions constitute trademark infringement.
1. Using a mark identical to a registered trademark or collective trademark on the same goods or services.
2. Using a mark identical to a registered trademark or collective trademark on similar goods or services, and hence causing the likelihood of confusing or misleading consumers.
3. Using a trademark that is similar to a registered trademark or collective trademark on identical or similar goods or services, and hence causing the likelihood of confusing or misleading relevant consumers. |
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| Q7: Is there any civil remedy for trademark infringement? |
| Yes. According to article 61, a trademark right holder may claim damages from a person infringing those trademark rights, and may request exclusion of infringement thereto; in case of the likelihood of infringement, the said right holder may also request the prevention thereof. |
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| Q8: Can I ask the Customs Authority to suspend the release of imported or exported goods for trademark infringement? |
Yes. According to article 65, a trademark right holder may request the Customs Authority to suspend the release of imported or exported goods that are suspected of infringing the trademark rights of the said right holder.
Without prejudice to the protection of the confidentiality of the detained goods, the Customs Authority may allow the inspection of the detained goods requested by the applicant thereof or the party whose goods are detained.
Where the applicant thereof is awarded an affirmed court ruling stating that the detained goods has infringed trademark rights, the party of the detained goods shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained goods, except for the conditions set forth in paragraph 4 of Article 66. |
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| Q9: Is there any criminal penalty for trademark infringement? |
Yes. According article 81, any person who commits any of the following acts without prior consent of the trademark or the collective trademark right holder thereof shall be charged with imprisonment for no more than three years, detention and, in addition thereto or in lieu thereof, a fine of no more than NT$200,000:
1. One who uses a mark identical to a registered trademark or collective trademark on the same goods or services;
2. One who uses a mark identical to a registered trademark or collective trademark on similar goods or services, and hence has caused the likelihood of confusion or misleading relevant consumers;
3. One who uses a trademark that is similar to a registered trademark or collective trademark on identical or similar goods or services, and hence has caused the likelihood of confusion of relevant consumers. |
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| Q10: Who is eligible for filing a trademark application? |
| Generally speaking, any domestic or foreign natural person, juristic person, or business entities (business establishments or firms) who use trademarks to identify the goods or services they offer in trade may file a trademark application in the name of an individual, juristic person, or business entity, except for collective trademarks, collective membership marks, and certification marks, which are subject to the following rules: The applicant of a collective trademark or collective membership mark is restricted to business associations, social organizations, or groups that exist as a juristic person. |
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