Requirements, Deadlines and Common Pitfalls for Foreign Applicants
Although Taiwan is not a member of the Paris Convention for the Protection of Industrial Property, Taiwan has been a member of the World Trade Organization (“WTO”) since January 1, 2002. Accordingly, Taiwan’s Trademark Act provides a priority system under which an applicant who has first filed a trademark application in a WTO member may claim priority when subsequently filing the corresponding trademark application in Taiwan.
As most major trading countries are WTO members, foreign trademark applicants may generally claim priority from their first trademark application when filing the corresponding application in Taiwan, provided that the statutory requirements are satisfied. However, the British Virgin Islands (BVI) and the Cayman Islands are not themselves WTO members. A trademark application first filed in either of these jurisdictions should therefore not be assumed to provide a basis for claiming WTO priority in Taiwan.
1. Six-Month Priority Period
An applicant who has first duly filed an application for registration of a trademark in a WTO member may claim priority for a corresponding Taiwan trademark application filed within six months from the date of the first application.
For calculation of the six-month period, the period begins on the day following the first filing date.
Where the priority claim is valid, the filing date of the first foreign application will be regarded as the priority date of the corresponding Taiwan application for the goods or services entitled to priority.
2. Scope of Goods or Services Entitled to Priority
The goods or services designated in the Taiwan application do not necessarily have to be worded identically to those designated in the first foreign application.
The Taiwan application may designate:
- the same goods or services as those covered by the priority application; or
- goods or services having a narrower scope than those covered by the priority application.
In either case, priority may be recognized to the extent that the goods or services designated in the Taiwan application fall within the scope of those covered by the first foreign application.
The Taiwan application may also designate goods or services having a broader scope than those covered by the priority application. However, in such a case, priority will be recognized only for the goods or services falling within the scope of the first foreign application. The additional goods or services extending beyond the scope of the priority application will retain the actual Taiwan filing date and will not enjoy the benefit of the foreign priority date.
Example:
If the first foreign application covers:
“shirts, T-shirts and jackets”
and the subsequent Taiwan application covers:
“clothing, footwear and headgear,”
priority may be recognized only with respect to the goods in the Taiwan application that correspond to or fall within the scope of “shirts, T-shirts and jackets.” The remaining goods that exceed the scope of the first foreign application will not be entitled to the claimed priority.
Accordingly, a Taiwan application does not necessarily lose the entire priority claim merely because its specification of goods or services is broader than that of the first foreign application. The scope entitled to priority should be determined by comparing the goods or services covered by the two applications.
3. Priority Must Be Claimed at the Time of Filing
Priority should be claimed when the Taiwan trademark application is filed.
The application should identify:
- the filing date of the first application;
- the country or WTO member in which the first application was filed; and
- the application number of the first application.
If the application number has not yet been assigned at the time of filing in Taiwan, it may subsequently be supplemented in accordance with Taiwan practice.
Failure to claim priority when filing the Taiwan application may result in loss of the right to claim priority.
4. Three-Month Period for Filing the Priority Document
Where the priority document is not submitted together with the Taiwan trademark application, it must generally be submitted within three months from the day following the Taiwan filing date.
Failure to submit an acceptable priority document within the prescribed period may result in loss of the priority claim.
The priority document should be an official document issued or certified by the competent intellectual property or trademark authority of the country or territory of first filing and should provide sufficient information to establish the contents of the first application.
5. A Copy of the Priority Document May Be Accepted
An important practical distinction exists between Taiwan patent and trademark practice.
For a trademark application, the priority document is not necessarily required to be submitted in its original form. A copy may be submitted, provided that the applicant explains or certifies that the copy is identical to the original or certified original.
TIPO may nevertheless request production of the original or certified original if verification is considered necessary.
This provides foreign trademark applicants with greater flexibility in handling priority documentation and can substantially reduce the time and expense involved in sending original documents to Taiwan.
6. Special Practice for EU and New Zealand Priority Documents
Taiwan also provides a convenient practice for certain electronically verifiable priority documents.
Where an official priority document issued by the competent authority of the European Union or New Zealand can be downloaded from the authority’s official website and contains a verification code, the downloaded document may be submitted to TIPO.
TIPO examiners may use the verification code to verify the document through the relevant official website. Once successfully verified, the downloaded document is accorded the same effect as a paper priority document.
Accordingly, where such an electronically verifiable official document is available, it is generally unnecessary to obtain and courier a traditional paper original to Taiwan.
7. Common Mistake: Filing the Wrong Document
A practical problem has recently arisen in connection with certain priority claims based on French trademark applications.
In some cases, applicants have mistakenly submitted an ordinary document evidencing the filing of the French trademark application instead of the proper priority document issued by the French intellectual property authority.
Foreign applicants should be aware that a document merely showing that an application has been filed is not necessarily the same as an official priority document.
A proper French priority document, as illustrated in the sample published by TIPO, contains information identifying the priority application, including, for example:
FRANCE – PRIORITY DOCUMENT
Priority Application No.: [Application Number]
Filing Date: [Date]
Applicant: [Name of Applicant]
Trademark: [Representation of the Mark]
Designated Goods/Services: [Goods and/or Services]
Issued/Certified by the competent French intellectual property authority
In particular, an ordinary filing receipt, acknowledgement of filing, application confirmation or similar document should not automatically be regarded as the required priority document.
TIPO has published a sample of the proper French trademark priority document for reference. Applicants claiming priority from a French application are strongly advised to compare the document obtained from the French authority with the sample published by TIPO before submitting it in Taiwan.
8. Practical Checklist for Foreign Applicants
Before filing a Taiwan trademark application claiming foreign priority, applicants and foreign counsel should confirm the following:
- Six-month deadline – Is the Taiwan application being filed within six months from the first foreign filing date?
- Priority claim at filing – Has the foreign priority been properly claimed in the Taiwan application?
- Eligible jurisdiction – Was the first application filed in a jurisdiction that qualifies as a basis for priority under Taiwan law?
- Goods and services – Do the goods or services for which priority is sought fall within the scope of those designated in the first foreign application?
- Three-month documentary deadline – Will the proper priority document be submitted within three months from the day following the Taiwan filing date?
- Correct document – Is the document an official priority document rather than merely a filing receipt, filing acknowledgement or application confirmation?
- EU/New Zealand applications – If an electronically verifiable official priority document is available, does it contain the information or verification code required for TIPO to verify it?
Conclusion
The Taiwan application must be filed within the six-month priority period, priority must be properly claimed when the application is filed, and the required priority document must generally be submitted within three months after the Taiwan filing date.
Applicants should also carefully compare the goods or services in the Taiwan application with those of the first foreign application. A broader Taiwan specification does not necessarily invalidate the entire priority claim; rather, goods or services extending beyond the scope of the priority application will not enjoy the foreign priority date.
Equally important is the submission of the correct priority document. The recent practical issue involving French trademark applications illustrates why an ordinary filing receipt or application confirmation should not be confused with an official priority document.
Careful attention to these matters at the outset can prevent an otherwise valid priority claim from being lost because of an avoidable procedural or documentary error.
