Nowadays, the design appearance or trademark of a commodity always plays an important role in commercial activities. The intellectual property of such design or trademark in Taiwan is protected by the Patent Act or Trademark Act, respectively. Currently, the relevant stipulations of the Taiwan Patent Act or Trademark Act have mostly met international trends, but there are characteristics unique to Taiwan patent and trademark regulations.
A patent in Taiwan may refer to an invention patent, utility model patent, or design patent under the same Patent Act, which is different from Japan, Korea or Germany that has an individual law to protect a design application.
Unlike in China, a patent application (which may also be invention, utility model or design) is filed with The State Intellectual Property Office (SIPO), but a trademark application is filed with Trademark Office of State Administration for Industry and Commerce (SAIC). In Taiwan, however, an invention, utility model or design patent application or a trademark application is filed with Taiwan Intellectual Property Office (TIPO).
Aside from the above, it is possible that sometimes an applicant may become confused about the filing requirements and protection scope between a design and a trademark in Taiwan. As such, the differences between a design patent and a trademark, according to the prevailing Taiwan Patent Act and Trademark Act, are provided as follows.
| Design Patent | Trademark | |
|---|---|---|
| Filing Object | Creation of an article as a whole or in part by visual appeal, in respect of the shape, pattern, color, or combination thereof | Any sign with distinctiveness, and may consist of word, design, symbol, etc., or combination thereof |
| Requirements | The patentability of a design requires Industrial utilization, novelty and creativity ; basically, a design should possess some functionality and emphasizes its aesthetic or decorative features with visual effect | Distinctiveness of a trademark will decide its registrability. |
| Protection Types | Design as a whole, Partial design, Computer-generated icons, Graphical user interfaces (GUI), Sets of articles | Trademark, Collective trademark, Certification mark, Collective mark |
| Filing manner | Basically a design should contain only one embodiment or article; if there are two or more articles belonging to the same class and are customarily sold or used together, a set of articles may be filed | Multi-class application could be filed; multi-class goods and/or services may be listed in a single application |
| Priority claiming (must be made at the same time when filing Taiwan application within 6 months from its priority date) | Each design application can claim only a single priority but not multiple priorities | Multiple priorities may be claimed |
| International Classification | Locarno Classification (LOC) | Nice Classification (NLC) |
| Required documents | Application, specification and drawings, official fees | Application, trademark specimen, official fees |
| Examination | Automatic examination after filing formalities are completed | Automatic examination after filing formalities are completed |
| Examination period | About eight to twelve months | About six to ten months |
| Publication and Issuance of Patent/Trademark Certificate | Issue fee and first annuity must be paid within 3 months upon receipt of a Notice of Allowance, and then the patent application will be published in the official gazette and issued a patent certificate | Registration fee payable within 2 months upon receipt of a Notice of Acceptance, and then the trademark application will be published in the official gazette and issued a trademark certificate |
| Opposition Invalidation Revocation (or ancellation) | 。No opposition system 。Invalidation can be filed on or after the publication date | 。Post-grant opposition can be filed within 3 months after the publication date 。Invalidation can be filed within 5 years after the publication date 。Revocation (or Cancellation) can be filed against a trademark which has not been used for 3 years after its registration |
| Protection Period | 12 years from the application date of patent application, and non-extensible | 10 years from publication, and extensible each time for 10 years |
| Maintenance of Rights | After the publication of granted patent, annuity starting from the second year must be paid by each anniversary of the publication date | Renewal fee must be paid within 6 months before expiration date of every 10 years after publication of registration |
| Responsibilities for Infringement | The right owner may institute civil action when an infringement occurs | Both civil and criminal actions may be instituted when an infringement occurs |
| Others | For similar design of a same applicant, a derivative design application could be filed, and the right of a derivative design patent can be claimed independently* | Non-traditional trademark containing sound, three-dimensional shape, color, motion, hologram or scent is also registrable |
*For a derivative design patent, it is required to pay an issue fee and annuity fee. Its rights will continue to exist regardless of whether the parent design patent right is expired or has been invalidated, and its protection period must not extend beyond the 12-year protection term of its parent design patent. If an assignment is filed for a parent design application or granted patent, the same assignment must also be filed for its derivative design application or granted application.
Notably, the duration of protection is at a maximum of 12 years for a design patent but it could be continually extended every 10 years for a trademark registration. In case of an infringement, the right owner of a design patent has to initiate civil action against the infringer in order to claim for damages, yet the right owner of a trademark can take both civil and criminal actions against the infringers, and the border custom can also involve or implement protection measures against the allegedly infringing goods. Therefore the IP protection on a trademark registration is generally stronger than that of a design patent, yet not all designs are trademark registrable and they may need to be filed as design applications.
