Filing Patents & Trademarks in Taiwan

The Taiwanese legislature enacted a number of changes to the Patent Law on October 4, 2001 which came into effect on October 26, 2001. Some of the changes are set out below.

(1) For applications filed on or after October 26, 2001, applications will be published eighteen months from their filing date irrespective of whether they are ready for grant at that point.

(2) Examination is no longer automatic, but must be requested within three years of filing the application. If this is not done, the application will be held to be abandoned.

(3) All patents that were in force on January 1, 2002 have their maximum term extended to twenty years from their filing date as long as appropriate maintenance fees are paid. The terms of all utility models that were in force on January 1, 2002 will become fifteen years from their filing date and the terms of all design patents twelve years from their filing date.

(4) The possibility of obtaining criminal sanctions for patent infringement has been ended and henceforth patent infringement will give rise only to civil liability.

(5) Amendments are permitted only within fifteen months from filing, at the time of requesting substantive examination, within three months of notification that examination has commenced or in response to an official action.

(6) Formalities relating to securing a filing date, joint ownership and, where relevant, to the depositing of microorganism samples have been liberalized somewhat.

(7) All nationals of WTO-member states now have the right to claim priority in Taiwan from applications filed elsewhere as long as the Taiwanese application is filed within one year of the first filing elsewhere. However, it has still not been decided whether it will be possible to claim any date earlier than January 1, 2002.

(8) Additionally, a six-month grace period is now provided in certain circumstances from the date of publication of the design within which a design application can be filed.

The Taiwan Trademark Act constitutes this country's legal framework for trademark protection.  Articles 5-2 and 23-4 of the Trademark Act concretely address the issue of distinctiveness.  The following are some of the factors considered by Taiwan Trademark law when examining trademark distinctiveness in goods or services:

1.      Consumer recognition by relevant consumers;

2.      How transactions are conducted and the manner how the trademark is used;

3.      If the trademark identifies goods or services and distinguishes them from others;

4.      The length of time the trademark has been used on the designated goods or services, the manner of use, and how the trademark is used by competitors in the same trade;

5.       The sales figures or amount of advertisement for the designated goods or services on which the trademark is used;

6.       The market presence, sales network and points of sale of the designated goods or services on which the trademark is used;

7.       Certificates issued by advertising agencies or mass media firms;

8.       Certificates issued by credible institutions;

9.       Registration certificates issued in other countries; and

10.   Other proofs of distinctiveness

The evaluation of distinctiveness applies to both domestic and foreign materials.  Yet, the judgment of local consumers must be made to determine whether they are able to recognize that trademark as a sign that identifies goods or services.