The Trademark Act in Taiwan was enacted and promulgated on May 6, 1930, followed by its Enforcement Rules promulgated in December of the same year, and both then enforced starting from January 1, 1931. Since then the Act was revised for 13 times, accompanied by the enactment, promulgation and amendment of numerous decrees and rules during these years. In Taiwan many amendments or notifications were made in order to bring the Act in harmonization with the international practice. The past amendments included those which were established or abolished, and those materials could be served as valued information references for government policy making in the future, or academic study and research. Accordingly Taiwan Intellectual Property Office (TIPO) has recently compiled the major changes to chronicle these historical events and provided the compilation online for public reference. The contents of the compilation are listed as follows:
January 1, 1931
Adopting “arbitrary registration” system, the protected object of right comprises “trademarks” and “non-profit sector goods and marks”; defining the active and passive requirements for trademark registration; providing basis to handle “conflict trademark” in the order of first-to-use → first-to-file → negotiating and reaching agreement in case of same filing date; agent representation was forcefully required for applicants who have no domicile or business office in Taiwan; provisions stipulated for the bona fide use of trademark over 10 years; establishment of associated trademark system; adopting the principle of reciprocity on foreign applicant; the relationship established for the right of trademark and its business; approval on recording trademark assignment and pledge could be used to fight against a third party; the trademark term and its renewal term are 20 years each; bona fide and common use of a trademark is excluded from another person’s registered trademark; establishment of cancellation system of trademark right; establishment of opposition system before registration; establishment of invalidation system; establishment of re-examination and re-invalidation system.
November 25, 1935
Pronunciation of words or characters was included in the trademark protection; repeal of special requirements for bona fide use of trademark over 10 years; the trademark right shall cover the designated goods of the mark.
October 26, 1958
Registrable trademark was based on the principle of Chinese words and by Mandarin (i.e. a trademark could not be filed in a foreign language only); amending the handling of “conflict trademark” to the eclectic principle; establishment of provisions on licensing of the trademark; abolishing re-examination and re-invalidation system from the pre-appeal procedure
March 21, 1960
Amending the classification of goods into 72 classes based on the revised Enforcement Rules of Trademark Act as promulgated on March 18, 1960
July 6, 1972
Defining a trademark is constituted by “name” and “representation”; amending the definition of “associated trademark” and introducing “defensive trademark” system; amending the trademark term and its renewal term into 10 years; amending to handle “conflict trademark” on the basis of the first-to-file; amending the statutory term for filing a notice of opposition from 6 to 3 months and appeal from 60 to 30 days; setting a term for filing petition of invalidation within 3 years from its registration date; provision of civil and criminal responsibilities for trademark infringement; introducing “Service mark” system.
June 15, 1973
Amending the Enforcement Rules of Trademark Act in which the number of classifications was increased up to 103 classes including 8 service classes.
January 28, 1983
Expressly stipulating a trademark shall be protected for its representation only, and the name not included in the representation; defining the reasons for extinguishment of trademark right; provision of punishment for use of unregistered famous foreign trademark.
December 1, 1985
Provision for the trademark right owner to file petition for prevention of infringement; expressly stipulating how the trademark right owner could seek compensation for damages and to ease his burden of proof; imposing joint and several liability for compensatory damages on a party who acts by unknowingly to sell, display, export and import the counterfeit goods; allowing foreign juridical person or group to file litigation in Taiwan; providing legal basis for setting up a special court for trademark litigation.
October 21, 1987
Changing classification of goods from 103 to 95 classes and services from 8 to 12 classes by amending the Enforcement Rules of Trademark Act.
May 28, 1989
Provision for submitting proof of registered business scope when filing a trademark application; adopting professional trademark agent system; extending the scope to confiscate the counterfeit and pirated goods.
May 16, 1992
Adoption of trademark “disclaimer” system.
December 24, 1993
Deleting requirement for using Chinese in a trademark by a domestic applicant; adoption of priority claim for trademark application; repealing requirement for an interested party be an opposer; expressly stipulating the protection scope of trademark right within the goods designated; adding provisions of bona fide use and exhaustion of rights for trademark protection; relaxing restrictions on licensing the trademark so that the right owner could license the trademark in whole or in part; allowing pledge for trademark right; introducing certification mark and collective mark system.
August 2, 1994
“Trademark Official Fee Schedule” became effective.
May 20, 1994
“Operation directions governing the patent and trademark applications for applicants from Mainland China” became effective.
August 17, 1994
Expressly stipulating the requirements of trademark disclaimer in the Enforcement Rules of Trademark Act; introducing Nice International Classification System (Class 1 to 34 for goods and Class 35 to 42 for services).
May 9, 1997
Provision of Color combination could be the element of registrable trademark; six-month grace period for trademark renewal; expressly stipulating the protection on famous trademark or mark in accordance with the requirements of TRIPS; trademark squatting was set to be prohibitive requirements for trademark registration; extending the scope of destruction of counterfeit goods based on Article 46 of TRIPs.
January 1, 2001
Adopting different levels of trademark filing fees for number of designated goods.
April 12, 2002
Change of classes of services from 42 to 45.
May 30, 2003
Extending the scope of a trademark to cover goods and services and abolishing “Service mark” system; deleting requirements for trademark applicant showing the use of trademark or intention of applicant’s use; sound mark and three-dimensional mark are registrable; examiner’s name must be shown in a trademark decision; multiple classes are acceptable for a single application; introducing trademark divisional application system; introducing the prohibitive requirements of “functionality”, “trademark dilution”, “geographical indication for wines”, etc.; trademark registration fees payable by two instalments; amending the opposition period to be 3 months after registration; abolishing “associated trademark” and “defensive trademark” system; repealing the substantive examination for renewal application; expressly stipulating an assignment of trademark right would not affect the licensing relationship so that the licensing agreement before the assignment would still be applicable to the assignee; appropriate and distinguishing indication shall be affixed to a trademark to prevent confusion of consumers resulting by assignment of multi-class trademark.
May 1, 2004
“Trademark Assessment and Evaluation Procedures” became effective.
September 2, 2004
Implementing “Operational Directions for Registration of Certification Mark by Geography Indication”
July 13, 2006
Announcement of requirements for joint filing of a trademark.
May 11, 2008
“Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means” became effective.
February 1, 2011
Redefining trademark filing fees based on number of items of goods/retail services.
October 19, 2011
Promulgation of operational directions for cross-strait trademark disputed matters; broadening the protectable trademark elements to any sign or logo with distinctiveness, such as words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or their combination; introduction of priority claim system based on display of goods or services at an international exhibition held or recognized by Taiwan government; express stipulation on a trademark jointly-filed; providing relief measures for failure to pay the registration fee within the prescribed period (cf. STLT Article 14); abolishing the two- instalment system for registration fee; application of the international exhaustion doctrine in Taiwan; providing exclusive license and non-exclusive license per STLT; amendments on the related provisions of trademark infringement including subjective requirement; defining “geographical collective trademark” and providing its related provisions; adding criminal provision on infringement of certification mark; adding criminal provision for sale or intention of sale for the infringing goods via electronic medium or internet.
