When Jeff Jones, co-founder of CarPal Car Sharing in Taiwan, suggested I have him write a post on registering a trademark in Taiwan, I was pretty skeptical, mostly because Jeff is not a lawyer. But when I actually got the post, I knew I had to run it, in large measure because Jeff is not a lawyer. I just like how it conveys from the perspective of a businessperson what it is like to have to and then secure a trademark. So here goes.
By Jeff Jones, co-founder, CarPal Car Sharing Taiwan
Having recently gone through the process of registering a few trademarks in Taiwan I thought it may be helpful to share the basic process and costs involved. If you have experience registering trademarks in the U.S. you will find the process in Taiwan similar albeit with a few unique twists.
Trademark matters in Taiwan are handled through the Taiwan Intellectual Property Office (English) (TIPO), which is part of the Ministry of Economic Affairs in the Executive Yuan.
As in the People’s Republic of China, trademarks in Taiwan are registered on a first to register basis. This is an important distinction from the U.S., where trademark rights are attached to use, not registration.
Step 1. Hire an attorney or trademark firm to file your application
There are a range of firms that provide trademark search, application and maintenance services. These vary from law firms to non-attorney service companies which typically also handle patent matters. The cost for trademark registration services varies widely. Two law firms we contacted quoted between $500-800 USD, in addition to the fees charged by TIPO, to search for trademark availability, draft and file the application. TIPO charges an application fee of NT$3,000 (~$105 USD) per trademark, per class.
In our case, my business partner and I were referred to a local Taipei law firm that had worked with other startups. First order of business was signing a power of attorney on behalf of our Taiwanese company granting the attorney authority to file and manage our company’s trademark dealings with TIPO.
Step 2. What to trademark and searching for similar marks
Registering a trademark in a foreign country presented something unique which I had not considered. Should we register only the Chinese name of our company?Perhaps only the English name? Or yet maybe only our logo which doesn’t include the English or Chinese names, but rather the letters “c” and “p” in a stylized fashion.
It is important to consider how you will use your mark. In our case, we wanted to maximize our options since we may use a combination of English, Chinese, and logo across different mediums, so we opted for registering three distinct trademarks.
Searching for similar marks is easily done on the TIPO web site in English and Chinese. Once you have identified a potential name or phrase to trademark I recommend doing a preliminary search yourself before even approaching a lawyer or service provider.
Of course you should also check to make sure relevant domain names are available before trademarking. This is as simple as going to a domain registrar such as GoDaddy.com and searching for availability.
Step 3. Class selection and completing the application
Trademark classes are commonly referred to as classification of goods and services. It is a standard way to describe and organize the types of goods and services to which the marks apply. The Nice Classification of Goods and Services is an international standard adopted by 148 countries.
Though Taiwan is not a signatory to international trademark treaties, Taiwan is a member of the World Trade Organization (WTO), and it follows the Nice Classification system.
Once you determine which classes(s) to file your trademark under, you are ready to complete the application. You must attach a few examples to your application showing the marks. In our case, we submitted copies of our business cards and a copy of a marketing brochure we had produced as examples of how our marks would be used.
Step 4. Wait
Once the application is accepted by TIPO the wait begins. According to TIPO applications normally take between 8-10 months from submission to registration. If TIPO has any questions or concerns about your application they will contact the attorney/service firm to seek clarification. In our case we received no communication from the time our applications were submitted in mid-April until notification of approval came 6 months later in October.
Step 5. Take it to the bank
When TIPO sends notification that your trademark has been approved for registration they also send a bill for NT$2,500 (~$90 USD). You must take the bill to a specific branch of a particular bank to pay the fee.
Step 6. Registration, Publication and Opposition
About 1-2 months after you pay the registration fees discussed in Step 4, TIPO will issue the formal notice of registration. Congratulations, you now have a registered Taiwan trademark valid for 10 years from the date of publication, at which time you can file to extend for a subsequent 10 year period.
TIPO publishes all new trademark registrations, similar to the trademark gazette published by the U.S. Patent & Trademark Office. Others have a three month period to file an opposition to the registration of the trademark.
I should note that though Taiwan is a first-to-register country, if you do not use your trademark in commerce for a period of three years your mark may be cancelled.