Trademark – 3 helpful tips that trademark agents don’t tell their clients

This article is contributed by Trasomark Limited, a Taiwan start-up who is specialized in providing global trade mark advisory services.

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Happy 2022 and welcome on board for your Taiwan journey!

Taiwan is no doubt one of the most exciting economies! In 2021, GDP growth rate is expected to exceed 6%, which is by all means remarkable for a developed economy. Coupled with a readily available pool of decent talents, competitive tax-rate, a stable and orderly society, it is more preferable now than at any time in recent years to set your footprint here.

You trade, so you file a trademark. Trademark filings should have immediately sprung to your mind when a business expansion to a new market is in contemplation. Trasomark could be your:-

1.     Trademark Mini Library;
2.     Your Internal Advisor to help oversee your global trademark filing campaigns; and
3.     Referring professional trademark agents for top-class global trademark services.

Please click Trasomark to learn more.

Taiwan Trademark Applications – The Basics

If you are new to trademark filings, let us briefly mention here some basics as an inauguration for our encounter at Startup Taiwan. 

A trademark application in Taiwan must be filed in Chinese, and local support seems inevitable. Procedure-wise, it is not overly complicated in Taiwan. Like many other jurisdictions, you need to provide the Taiwan Intellectual Property Office (“TIPO”) with the name and address of the applicant as well as a specimen of the proposed trademark. While a Power of Attorney is required, notarization/ legalization is not necessary.

The more difficult part would be the drafting of specifications, i.e. choosing designated goods/ services among thousands of standard items in 45 classes. Taiwan has its own set of local rules and it is impossible to elaborate here. Our quick tip is not to “over-expand” the specifications because excessive items may attract additional official fees. Furthermore, the examination of evidence of use is rather strict in Taiwan. It is not straightforward to prove use on peripheral products/ services in the future.

Trademark registrations typically last for 10 years commencing from the registration date, subject to further renewal. In practice, always keep using your registered mark. a third party can try to file a non-use revocation to cancel your registered mark if unused for a period of 3 years.

You can always visit the website of TIPO at https://www.tipo.gov.tw/en/np-639-2.html, where loads of useful information in English is accessible.

More Tips from Trasomark

In fact you can effortlessly google the basics. Trasomark does not stop here and would like to help you be better equipped for your trademark journey in Taiwan.

1.     The Importance of a Corresponding Chinese Mark

The natural fondness of Taiwan customers for foreign brands is well-known. While it will only serve you good to keep your foreign brand, you may also want to adopt a corresponding Chinese brand (which could well be the translation or transliteration, or even a brand new Chinese mark), simply because the majority of the population in Taiwan is still more used to Chinese. This is especially true for brands of mass-market products. With a well-designed Chinese name, your brand will certainly convey a stronger sense of identity and impression for the Taiwanese!

2.     Filing a combined Chinese and English mark

Cost-effectiveness is always valued. At times, we recommend that our clients file a trademark combining the Chinese and English marks together, instead of filing two separate trademark applications, for cost-saving. While this is a valid tactic, please also understand its limitations.

Assuming you run a floral business called “Flowerful” in Australia and now expand to Taiwan. Your local assistant helps you devise a Chinese name called “滿花”. To save costs, you file a trademark application for the combined “Flowerful 滿花” mark in Taiwan. Naturally “Flowerful” is your major brand carrying your identity, and “滿花” is just subordinate. When it comes to comparison of the similarities of the trademarks, however, TIPO may think differently.

Why? Typically we start with locating the distinctive part of your mark (i.e. the part catching the attention of the customers). Since your Chinese and English components are equal in size, the TIPO will likely adjudicate that “滿花” is the distinctive component as an average customer in Taiwan is more receptive to Chinese.

If unluckily there is no similar English earlier mark but only a similar Chinese earlier mark called “滿花花”, mere similarities to the Chinese component could rob you from registration of the combined mark in Taiwan. You may therefore feel aggrieved especially that the Chinese“滿花”component is relatively unimportant.

There are other cases suggesting that the English component occupying two-third of the trademark may be the distinctive component. Other things being equal, application of “FLOWERFUL滿花” mark may end with a completely different result.

3.     The Appreciation of Taiwanese dialect

When designing a trademark you must also keep in mind another widely used dialect in Taiwan – Taiwanese, in addition to the official Mandarin. The “青啤” (Chinese: Chin-Pi) case is a vivid demonstration on how the Taiwanese pronunciation can affect the decision of the TIPO.

Originally “青” and “啤” is commonly apprehended as “green” and “beer” respectively in Mandarin Chinese. However since “青” in Taiwanese means “fresh”, “青啤” as combination can also easily be associated with “draft beer” in Taiwan. As a result, the “青啤” trademark application covering “beers” is considered non-distinctive by TIPO and is refused registration. This case highlights the importance of the understanding of the local culture when applying for a trademark in Taiwan.

Anyway, as Taiwan is a civil law jurisdiction, earlier decisions are never binding. In our experience, the examination results may at times produce strange results, leaving you disappointed. Luckily, TIPO is in general open and welcomes well-formulated arguments. The above are of course simplified discussions and only serve as introductory early tips. You should always consult a professional local agent and do not blindly accept the Registrar’s decisions.

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