In the recent survey we conducted among startups and small businesses, the next trademark registration destination is China. Here are some trademark law differences between Taiwan and China: First to file basis

  1. First to file basis

When a trademark is registered, it is protected on the first-to-file basis. This means that any logo, symbol, word mark, or sound is granted trademark protection if you are the first one to file it in either country. So even though you have your mark for longer time, but haven’t registered it, and somebody took your mark and registered it, you might not have the rights anymore for that mark. For those who failed to register their trademark, they can hire a lawyer to come up with a trademark strategy, but this is NOT recommended since the chance of getting back your trademark is low and probably incur a high litigation cost.

2. Service marks is allowed

A service mark is any distinguishing mark that grants protection to a service. Service marks can be both be registered in both countries.

3. Similar actions and appeals

Both jurisdictions follow similar actions and appeals to trademark infringement and lawsuits. Invalidation of existing marks, cancellations and oppositions are also both available.

4. Both follow the international class system

The international class system is a system for classifying which trademark class a product or service belongs to. However, there are some parts of the classes which is different from the way United States examines the trademark classes and thus result to different fillings for those three jurisdictions. Thus it is important to consult a trademark expert to assist the proper class a trademark belongs to.

5. Exclusion of political and historical symbols

Both countries disallow trademark registrations that contains national flag, a famous person’s image, or any that could be “detrimental to morals”. This reflects the two countries’ political history.

6. Be careful about suggestive or descriptive trademarks

A descriptive trademark directly provides idea of a product or service to a consumer, while a suggestive trademark is something that connects a symbol to a particular product or service. Suggestive trademarks have the “secondary meaning”, and it is a bit of a challenge for the company to relay the message. Foreign companies who wish to register suggestive trademarks must be able to provide adequate explanation onto why it is not a descriptive trademark.

As you see, although Taiwan and China have close trade and business relations, trademark registration is still slightly different. It is therefore advisable to consult a trademark professional to help you in trademark search, trademark classes, and get more documents that can grant you the trademark.