"*~FAQs for Trademark, Domain Name, Package and Company Name~*"
Relation Between International Madrid Trademark Registration and PRC Trademark
According to the PRC trademark practices and laws, if the Registrant has designated PRC as a protection member upon filing the International Madrid Trademark Registration, the registered trademark will be extendedly, of course, protected in PRC so far as the designated goods and/or services are concerned. The protection scope, however, should be identical to those registered in the original International Trademark Application. That is, only if there are/is different goods/services or mark design from the International Trademark Registration, it will be necessary for us to file new RPC trademark application(s) in this/these respect.
Generally speaking, it will be impossible and unnecessary for us to re-file PRC trademark application(s) for the same scope designated in the earlier registrations with WIPO unless PRC has never been designated as the protection country thereof.
Certainly, it will be possible and necessary to file applications for identical signs for different goods and services from the ones covered by the earlier registrations even though these goods or services are categorized in the same Class(es). Consequently, if an earlier trademark already covers some of the goods belonging to, e.g. Class 3, the new PRC application can cover the remaining goods in Class 3.
Since the protection for the registered trademark is limited to the device of the registered mark itself according to the PRC practice, it will be possible and suggestible to additionally file transliteration of the trademark in Latin into Chinese characters.
Assignment/Licensing/Name-Change/Address-change/Transferring/Security Interests Recordals
For petitioning an assignment recordal, our regular service including the disbursement and Official fees will generally be NT$10,000 and NT$2,000 respectively for a single application. We will discount from 20% to 80% depending on the necessitated procedures for further respective ones in a bundle of applications.
Moreover, for petitioning an assignment recordal, it will be necessary for us to submit the original or a hard copy of the executed assignment evidence, and the original of executed powers of attorney by both of the assignor and the assignee before the Trademark Office. It will be appropriate to submit a carbon copy of the assignment document with a written statement clarifying it is the true copy or if appearing to be a true copy of the original. Neither legalization nor notarization will be required for these documents. We can expect to receive the notification that the trademark assignment has been recorded around one-two months after completing the required filing procedures.
According to the general regular procedures, if there are multiple, e.g. factual assignments, it will be necessary to record the assignments from ¡§Company A¡¨ to ¡§Company B¡¨ and from ¡§Company B¡¨ to ¡§Company C¡¨ respectively. If, however, it is possible to submit the simple executed assignment showing only the registration(s) was/were transferred from the original assignor ¡§Company A¡¨ to the final assignee ¡§Company C¡¨ directly, it will be appropriate for the Client to petition a single assignment application for the assignment recordal through omitting the middle assignment recording step.
It is possible and necessary in this country to record a license agreement in this country in respect of trademark registration(s) if we are imminent to claim rights against an infringer. The trademark application(s), however, is/are unavailable for license recordal until it/they has/have been registered. Before then, the correct proprietor taking over the rights shall have no locus standi against the third parties. We can however petition the recordal of the applicant changes immediately upon claiming the right(s) to avoid such problems. Such recordal, however, will cost us about 3 or 6 months. Further, after then, the trademark use of the licensee will be regarded as the trademark use of the licensor and the licensee will be able to act against third parties.
For petitioning a name-change recordal, our regular service including the disbursement and Official fees will generally be NT$6,000 and NT$600 respectively for a single application. We will discount from 20% to 80% depending on the necessitated procedures for further respective ones in a bundle of applications. Nevertheless, for recording the change of the applicant¡¦s address, our service fee will be generally NT$1,500 without any official fees in addition to the disbursements around NT$500. Further, for effectuating these recordals, it will be necessary for us to submit the original or carbon copy of name-change evidence document from the Government in connection with the name changed from A to B. and, if applicable, then from B to C, and the original of the executed power of attorney from the assignee/Applicant with the current name. A general power will be continuously effective within five years for the same applicant for all applications.
In addition, the original of certificate of trademark registration is also required for effectuating the above-captioned recordal of a trademark registration. The correct owner of a trademark application/registration should be recorded with the Trademark Office if its name is changed. Otherwise, the new owner cannot rely on such change to have locus standi against any third party.
For proceeding a transferring recordal of trademark registration/pending application, the normal service fee will generally be NT$8,000 and the Official fee is NT$2,000 (for registration)/NT$500 (for pending application) respectively. In addition, the disbursements will be generally NT$2,000 per a single filing.
For recording the security interest for a trademark registration, our service and Official fee will generally be NT$13,000 and NT$2,000 respectively.