This, obviously, is easier said than done. If you don’t have a Mandarin Chinese speaker to help you navigate the process it can be next to impossible, and even if you do, dealing with the Taiwan Intellectual Property Office (TIPO) is beyond a chore.
However, if you want to register your trademark in Taiwan and ensure others don’t copy your logo or products, you need to do it.
This guide will help you grind through the process and get the perfect trademark for your business or product in Taiwan.
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Step 1. Determine what kind of product you are registering (and make sure it’s available for registration)
Before you start, make sure you have a trademark in mind. Need help? Check out our article on how to select a trademark for your business.
In order to register your trademark, both in Taiwan and in other countries, the first step is to determine that your trademark is unique enough to award you the sole trademark rights to it.
Your first tool is common sense. Ask yourself: “Is this trademark unique to my company or product?” or “Does my trademark have at least two words in it that aren’t commonly associated?”
For example, you could never register the name “Chen” in Taiwan because it is such a commonly held family name. Another example, at the end of 2016, someone applied for a trademark called “Hand Spinner” in trademark class 28 (toys). The application was rejected because the government thought the trademark word is just a generic name for this type of toy.
So the best solution would be to come up with a completely unique name, and trademark that instead.
If your trademark is relatively unique, you need to check that no one else has previously registered your trademark, or something demonstrably similar.
At this point, you can determine your trademark classification to see if someone has a similar trademark to yours.
Step 1 – Part 2: Determine your trademark classification
If you have searched for your trademark on the TIPO site, chances are you will already have a good idea of how to classify your trademark.
What you might not know is how trademark classifications work.
The trademark classification system is international, so if you have registered a trademark in another country, you will also already know what classification your trademark will have.
However, if you are new to registering a trademark, you will want to determine the parent classification group your logo or name belongs to. The easiest way to determine this is to search what type of business you are, or what type of products you sell, on the US Patent and Trademark Office classification search or at TMClass, a European trademark registration search tool.
For example, if you want to open a restaurant-bar in Taiwan, you might search “bar and restaurant”. You will see a number of results, but in the middle row, you will see the “classification” number for all results is the same – 043. Titled “class”, this is actually a numerical distinction of the parent classification your trademark will fall into.
This begs the question: can you have the same trademark, but under different classifications? Yes, many businesses do this because they offer a range of services and products and they want to avoid being penned in to one classification.
Once you know your parent classification number, you need to find your even more specific classification number. At this point, you should use the TIPO search tool to find this number. Just enter your parent class, then the text included in your trademark. If your trademark has no text, you can break down the logo using the search tool options provided.
This will reveal every trademark at all similar to yours, as well as confirm not only your parent class, but it will give you examples of competitors and other Taiwan businesses in your field who share the same subclass with you.
Once you have completed this process and you are fairly certain both your trademark can be registered and what class it is, repeat with other classes to ensure your trademark is entirely covered.
Armed with all of the classes you want to apply for, it’s time to start the paperwork.
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Step 2: Download the paperwork and fill out the application
To start, simply download trademark application paperwork here. Once you have it downloaded, either enter the information directly into the MS Word file, or print it out and fill it out by hand.
Now it’s time to fill out the application. Below are the sections in order (and how to complete them should you need further info):
- Your name
- Is your trademark in color or monochrome?
- It is always best to select monochrome. A trademark submission in color means that if someone submits a similar design but in a different color, they have a better chance of approval. Avoid this by keeping the official trademark black and white.
- The main picture of your logo.
- Short explanation of the trademark.
- You do not need to fill out this section – it simply isn’t necessary and TIPO agents don’t read it.
- Prior date of claim
- If you have applied to register your trademark in another country, you can claim the application date on the date of the international application submission, up to six months before your actual Taiwan submission date. If you can use this, be sure to as it will ensure you are awarded a trademark if someone else is registering something similar.
- Applicant national category
- There are three categories: Taiwan (ROC) citizen, China (PRC) citizen, and foreign. If you are registering as a foreign applicant, you will also need to include your nationality.
- Applicant legal category
- The three categories are: Legal person, organization, and factory. Depending on your selection, you will have to provide further information.
- ID information and Taiwan address
- If you are filing as a foreign applicant, your passport will act as your ID. You also need a Taiwan address if you are registering your trademark, unless you have an agent.
- Contact information
- Including phone number, email address, etc.
- Agent information.
- If you have an agent, they will request the agent’s name, company, address, phone number, and email.
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- Trademark class
- This is where you will enter all of the information you gathered in Step 1.
- Goods or services you are registering.
- This is a longer explanation of what it is exactly that you are registering.
- Name of product or service.
- The official name of what you are selling and associating with the trademark.
- Like trademark class, this is where you will enter all of the information you gathered in Step 1. This section is also entirely optional.
- Declaration of authenticity
- This is a clause stating that you are telling the truth to the best of your ability about all of the information contained within your application. This is a standard clause in many applications, both in Taiwan and around the world.
- 5 images of the logo or trademark
- These are for office use and to ensure there is a picture of the trademark on all copies of the application (should TIPO need to make duplicates).
Step 3: Fees and submission
Once you have the paperwork completed, you need to either mail it to the TIPO office or drop it off yourself.
Applications can also file through the TIPO e-filing system, available for download from TIPO. Be careful though; the app doesn’t work well and can be confusing.
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Step 3 part 2: Payment and wait
Once everything is filed, you will need to pay $3000NT per class applied for.
Once your application is filed and fees are paid, you need to wait six to eight months for your trademark to be approved.
If there is a minor problem, the trademark office will contact you directly. Otherwise, wait to hear back, either for approval or for pre-notice that your trademark will be rejected.
Step 4: Appealing a rejection pre-notice
There is always a chance that TIPO will decide your trademark is either:
- Too similar to another registered trademark, or
- Too general to be trademarked (e.g., the name “Smith”)
If they decide either of these things, before they formally reject your application, thus forcing you to begin all over again, they will most likely send you a “rejection pre-notice”.
The pre-notice will explain why your trademark has been rejected, as well as a basic explanation that you can appeal the decision. In order to appeal, however, you need to do the following:
- First, go back to the TIPO search tool and look for trademarks similar to yours. You are looking for anything that has been successfully registered that would prove yours should also be eligible for registration.
- For example, say you want to register the name “Jones,” but in a stylized script with a calligraphy flourish below. You should search for other single names with stylized scripts that have been registered. You will then document all examples of this you can find to show the TIPO officer.
- Next, document any proof you have that you have been using your logo and that it is clearly associated with your product, service, or brand.
- Take photos of times you have used your logo, and show proof of things like sponsorships or events you have sponsored, prior usage, events where it has been displayed, and how long you have been using it.
- You can also provide evidence regarding how many people have seen it. If your logo is on a YouTube channel and the video or channel has thousands of views, this sort of evidence could sway the decision in your favor.
- Citing this evidence, write a letter outlining why your trademark should be registered.
- Again, it is worth your while to have your letter translated into Mandarin if you have written it in another language. Using any other language risks extending the process and making it more difficult (and thus more frustrating) for your TIPO officer.
- Once you have collected evidence as to why you should get the trademark, re-submit it either by mail, personal delivery, or through the e-filing system.
At this point, hopefully your trademark will be approved. Still, if they reject your application, there is further recourse.
After a rejection notification, you can file an administrative appeal , which involves another round of paperwork. You can file your administrative appeal by printing out the paperwork and mailing it to TIPO (or by just visiting them in person). TIPO will forward your administrative appeal to the Petitions and Appeals Committee of the Ministry of Economic Affairs and the committee members will review your case..
Finally, if an administrative appeal does not work, you can hire a lawyer to take your case to Intellectual Property Court.
However, at this point, considering the cost in terms of time, money, and effort, we recommend reconsidering your trademark.
Step 5: Approval
Congratulations! Your trademark has been approved. The wait for approval is up to 10 months, so if you haven’t heard from TIPO in a while, understand that it takes time.
If you find yourself in this position, there are only a few more things you need to do.
First, you will need to submit a $2500NT registration fee. Once that is submitted, TIPO will file your trademark and publish it in their records.
Once your trademark is filed and published, you will receive a certificate declaring that the trademark is registered to you or your company. Be sure to keep this certificate in a safe place in case any further issues arise, or if anyone infringes on your registered trademark.
And that’s it! Happy registering!
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