"*~FAQs for Trademark, Domain Name, Package and Company Name~*"

Trademark Filing Practices and Fees

According to the Amended Trademark Law effective from November 28, 2003 here, goods categorized in different classes could be subjected to a single application if they are to be protected by the same trademark. That is, a separate filing will no more be compulsory for each class and multiple-class application can be filed. In addition, since this country adopts "the first filing system" rather than "the first use system", it will be better for us to obtain a boarder protection scope by designating all possible goods/services in a specific Class for the application. That is, if necessary, we can limit/restrict the designated goods/services in the future. For either a word mark or a design mark, it will be necessary for us to submit the filing particulars, i.e. the name, address and representative of the Applicant and the designated goods/services, and 10 copies of the mark drawing with the size of 6cm × 8cm in the factual used status.

For filing a single trademark application, our service fee will generally be NT$10,000 for the first class and NT$6,000 per class from the second class. In addition, the official fees will be NT$3,000, 5,000 and 9,000 based on the number (20, 60 and 60up) of the designated goods/services respectively for each class. For claiming the priority, our service charge will be about NT$2,000. For belated filing of the required document(s), our service fee will be NT$1,500. In addition, the disbursement will generally be around NT$2,000.

After filing, unless there exists any possible response costing from NT$8,000 to 20,000 each time, our service fees for reporting the notice of allowance will be NT$2,000. After receiving the Notice of Allowance, it will be necessary to pay the registration fee(s) within two months to obtain the certificate of registration together with the publication. In addition, there is a 3-months period for opposition after the publication.

For the first phase registration, the official fee will be the multiple of NT$1,000 based on the number (1 through 45) of the designated classes even though such registration is a single multiple class registration. Our service fee rendered for paying the registration fees and forwarding the Certificate of Trademark will accordingly be NT$4,000 for the first class and NT$2,000 per class from the second class(es). In addition, the disbursement will generally be around NT$2,000. (Our service fees will remain the same if both the first and second registration fees are to be paid at the same time.)

For the second phase registration which is to be effected by 3 years after the first registration, the official fee will be the multiple of NT$1,500 based on the number (1 through 45) of the designated classes even though such registration is a single multiple class registration. Our service fee will accordingly be NT$3,000 for the first class and NT$1,800 per class from the second class(es).

There is no standard examination period for an application. The Examiner might issue an office action shortly after the filing date but it is equally legal for her/him to issue the office action in about one year from the filing date. The Intellectual Property Office will take action automatically to notify the Examiner to speed up the examination only after eighteen months from the filing date. Nevertheless, the range of eight months to one year is a not-too-bad prediction.

After receiving the Notice of Allowance, it will be necessary to pay the registration fee(s) within two months to obtain the certificate of registration together with the publication. In addition, there is a 3-months period for opposition after the publication. In addition, the term of the registration is 10 years renewable for every 10 years.

Right Priority/Prior Rights

This country adopts "the earlier filing system" rather than "the first/earlier use system" so that whether or not the use of a mark is earlier than the filing date of the cited marks will not affect the judgment whether the application is similar with the earlier registration to cause general consumers to be confused and so not registrable.

Nevertheless, according to the Article 30 of the Trademark Law here, “The following cases shall not be governed by the effect of other’s trademark rights:

1. Expressing, through reasonable using means in good faith, one’s own name, title, or the name, shape, quality, function, place of origin of goods or service, or other descriptions of goods or service per se, not used as a trademark;
2. Where the 3-dimensional shape of goods or service is required for exercising its functionality;
3. Where, prior to the filing date of other’s trademark registration, a same or similar trademark has been used in good faith on the same or similar goods or service, provided such use is limited to originally used goods or service and the trademark rights owner may request the affixation of an appropriate distinguishing mark.

Where the goods bearing a registered trademark are traded and circulated on the market by the trademark rights owner or by a person having its consent, or put in auction or disposed under the law by the relevant authority, the trademark rights owner shall not claim the trademark rights in respect of said goods, provided this shall not apply for prevention of deterioration or damage of the goods or any other due cause.”

Accordingly, if a user can prove prior use, even though its trademark application will be finally held unregistrable, the use of its mark in connection with the designated goods would not constitute a trademark infringement. In addition, it can certainly submit various evidences, e.g. packaging, invoices, declaration and so on, to prove the prior use under the above Article 30.